AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS, GEOGRAPHICAL INDICATIONS AND OTHER PLAIN PACKAGING REQUIREMENTS APPLICABLE TO TOBACCO PRODUCTS AND PACKAGING COMMUNICATION FROM THE PANEL
Document: request for the establishment of a Panel
Date: 27 October 2014
Document codes: WT/DS458/18; WT/DS458/14
Complainant: Cuba
Respondent: Australia
Third parties: Argentina, Brazil, Canada, Chile, Dominican, EU, Guatemala, Honduras, India, Japan, South Korea, Malaysia, Mexico, New Zealand, Nicaragua, Norway, Philippines, Russia, Singapore, Taiwan, Thailand, Turkey, Ukraine, U.S., China, Nigeria, Indonesia, Peru, Saudi Arabia, South Africa, Uruguay, Zimbabwe, Ecuador
Dispute stage: Panel
Agreements cited: Art. 2.1, 3.1, 15.1, 15.4, 16.1, 16.3, 17, 22.2(b), 20, 24.3  Intellectual Property (TRIPS)Art. 2.1, 2.2  Technical Barriers to Trade (TBT)Art. III:4, IX  GATT 1994

AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS,
GEOGRAPHICAL INDICATIONS AND OTHER PLAIN PACKAGING REQUIREMENTS
APPLICABLE TO TOBACCO PRODUCTS AND PACKAGING
COMMUNICATION FROM THE PANEL
The following communication, dated 22 October 2014, was received from the Chairperson of the
Panel with the request that it be circulated to the Dispute Settlement Body (DSB).

On 7 May 2014, Australia submitted to the Panel a request for a preliminary ruling concerning the
consistency of Cuba's request for the establishment of a Panel () with Article 6.2 of
the Understanding on Rules and Procedures Governing the Settlement of Disputes.

On 19 August 2014, the Panel issued the attached preliminary ruling to the parties and third
parties.

After consulting the parties to the dispute, the Panel decided to inform the Dispute Settlement
Body (DSB) of the content of its preliminary ruling . Therefore, I would be grateful if you would
circulate this letter and the attached preliminary ruling to the Members of the DSB.

1.3. On 11 June 2014, Cuba responded to Australia's requests. Also on 11 June 2014, the Panel
provided the third parties with an opportunity to comment on Australia's preliminary ruling
request. On 17 June 2014, the Panel received comments from the European Union. On 18 June
2014, the Panel received comments from Argentina, Brazil, Canada, the Dominican Republic,
Guatemala, Honduras, Indonesia, and Mexico.
1.4. On 1 July 2014, the Panel received comments from Australia on Cuba's response to
Australia's request for a preliminary ruling. On 8 July, the Panel received from Cuba comments on
Australia's comments.
2 AUSTRALIA'S REQUEST FOR PRELIMINARY RULINGS
2.1. Australia requests that the Panel exclude fr om its terms of reference the following measures
and claims:
a. Cuba's claims under Article 2.1 of the TRIPS Agreement (read with Article 6 bis of the
Paris Convention), and Articles 16.3, 15.1 an d 17 of the TRIPS Agreement, on the basis
that these claims were not included in Cuba's consultations request, and that the
inclusion of these claims amounts to an improper expansion of the scope of the dispute;
b. Cuba's claims under Articles 15.1 and 17 of the TRIPS Agreement, on the basis that
Cuba's panel request does not provide a brief summary of the legal basis of the
complaint sufficient to present the problem clearly; and
c. The "non-exhaustive list of related measures and measures that 'complement or add to'
the measures explicitly identified in Cuba's panel request", on the basis that Cuba's
panel request does not identify the specific measures at issue.
1
2.2. We consider these three aspects of Australia's request in turn below.
3 INTRODUCTION OF NEW CLAIMS IN THE PANEL REQUEST
3.1. Australia argues that by adding new claims in the panel request that were not mentioned in
the request for consultations, Cuba improperly expanded the scope of the matter before this Panel.
3.2. This request relates to Cuba's claims under:
a. Article 6bis of the Paris Convention (read with Article 2.1 of the TRIPS Agreement);
b. Article 16.3 of the TRIPS Agreement;
c. Article 15.1 of the TRIPS Agreement;
d. Article 17 of the TRIPS Agreement.
3.3. We consider these claims in turn, starting with Cuba's claims under Article 16.3 of the TRIPS
Agreement and Article 6bis of the Paris Convention (through Article 2.1 of the TRIPS Agreement),
followed by its claims under Articles 15.1 and 17 of the TRIPS Agreement.
3.1 Claims under Articles 16.3 of the TRIPS Agreement and 6bis of the Paris Convention
3.1.1 Main arguments of the parties
3.1.1.1 Australia
3.4. Australia argues that Cuba's panel reques t contains "fundamentally new claims" that were
not notified in its request for consultations. In referring to "new claims" in this context, Australia is
referring to the claims Cuba made in its panel request regarding Article 6 bis of the Paris

1 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 1.

Convention and Article 16.3 of the TRIPS Agreement. 2 Australia argues that each of these
"additional claims" has taken Australia by surprise, and that Cuba did not raise its concerns in
relation to either of these claims with Australia during formal consultations. Australia points out
that, in the three-year period from April 2011, when Australia notified its measure to the WTO, to
April 2014, when Cuba filed its panel request, Cuba did not raise with Australia any concerns that
the tobacco plain packaging measure was inconsistent with either of these obligations. Australia
argues that it clearly was not afforded any opportunity to consult with Cuba on these claims, or to
assess whether the claims could be the subject of a mutually agreed solution, before Cuba
resorted to further dispute settlement action.
3
3.5. Australia argues that Cuba's additional cl aims expand the scope of this dispute and change
the essence of the complaint Cuba raised in consultations, because Cuba's new claims invoke new
and discrete obligations, involve different subject matters, or do not even concern obligations at
all.4 Australia argues that "the subject matter of Cuba's well known trademark claims under
Article 2.1 of the TRIPS Agreement, read with Article 6bis of the Paris Convention, and Article 16.3
of the TRIPS Agreement are distinct from the subject matter of its other trademark claims,
including its claim under Article 16.1 of the TRIPS Agreement (which was identified in Cuba's
consultations request)". Cuba's "new claims" relate to a specific subset of trademarks, namely,
well-known trademarks. Further, Australia notes, Cu ba's Article 16.1 claim relates to the rights of
existing registered trademark owners. In contrast, Cuba's new and additional Article 16.3 claim is
phrased so that it purports to apply with respec t to the rights of existing owners of well-known
trademarks as well as unidentified owners of future well-known trademarks.
5
3.6. Australia submits that the subject matte r of Cuba's new and ad ditional well-known
trademarks claims is distinct from that of Cuba's previously raised claim under Article 16.1 of the
TRIPS Agreement, and also that the obligations with which Australia must comply under these
well-known trademark claims are in addition to, and distinct from, Australia's obligations under
Article 16.1. Australia elaborates that, for exampl e, the protection granted under Article 16.1 of
the TRIPS Agreement only applies as regards the use of signs for goods or services that are
identical or similar to those in respect of which the trademark is registered. In contrast, in
defending a claim under Article 16.3, Australia would be required to defend its tobacco plain
packaging measure against allegations that Australia does not protect well-known trademarks
against use on goods or services that are not similar to those in respect of which the original
well-known trademark is registered.
6
3.7. Australia submits that the factors relied upon by Cuba in asserting that its claims under
Article 16.3 and Article 16.1 share the same essence are not sufficient to show that one claim
"evolved" from the other. 7 Australia argues that Cuba's submissions that its claims under
Article 16.3 and Article 16.1 are directed against the same conduct, relate to Australia's tobacco
plain packaging measure, and are sub-clauses of th e same provision; do not establish that Cuba's
well-known trademarks claims "evolved" from its Article 16.1 claim; nor is such an "evolution"
established by the fact that well-known trademarks are a specific subset of trademarks.
8 Australia
reiterates that the legal basis of Article 16.3 diffe rs from Article 16.1 both in terms of the subject
matter (namely, the types of trademarks) at issue and with respect to the scope of the relevant
"rights conferred" in relation to those different types of trademarks.9
3.8. As to the subject matter covered by thes e provisions, Australia posits that the "clear
distinction" between well-known trademarks, to which Article 16.3 applies, and registered
trademarks, to which Article 16.1 applies, is born e out by the different evidentiary requirements
for establishing each type of trademark. Thus, in order for the protection under Article 16.3 to
apply, not only must the trademark be registered, it also must be "well-known", a determination
for which "specific legal tests must be met and detailed supporting evidence must be provided".
10
In contrast, under Article 16.1, registration alone is sufficient to afford the owner of the registered

2 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 10.
3 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 11.
4 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 12.
5 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 13.
6 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 14.
7 Australia's comments on responses to Australia's requests for preliminary rulings, para. 18.
8 Australia's comments on responses to Australia's requests for preliminary rulings, para. 19.
9 Australia's comments on responses to Australia's requests for preliminary rulings, para. 20.
10 Australia's comments on responses to Australia's requests for preliminary rulings, para. 21.

trademark the protection granted. Australia adds that well-known trademarks are afforded
expanded protection under Article 16.3 as compared with the protection afforded to registered
trademarks under Article 16.1, and that Article 16.3, unlike Article 16.1, protects well-known
trademarks even with respect to the use of a trademark by a third party in relation to goods and
services that are not similar.
11
3.1.1.2 Cuba
3.9. Cuba argues that its claim that the pl ain packaging measures are inconsistent with
Article 16.3 of the TRIPS Agreement may reasonably be said to have evolved from the claim under
Article 16.1 of the TRIPS Agreement, which was included in Cuba's consultations request.
12
Specifically, Cuba notes that it claimed in its request for consultations that Australia's plain
packaging measures are inconsistent with Article 16.1 of the TRIPS Agreement, because Australia
prevents owners of registered trademarks "from enjoying the rights conferred by a trademark".
13
Cuba claimed in addition that Australia's plain packaging measures are inconsistent with
Article 16.3 of the TRIPS Agreement because Austra lia prevents owners of registered trademarks
that are well-known or might become well-known from enjoying the rights conferred by such a
trademark.
14 Cuba submits that "[b]oth of these claims share the essence that they are directed
against Australia's conduct of preventing owners of registered trademarks from 'enjoying the
rights conferred by [trademarks]'", and that both of these claims relate to the same measure (that
is, Australia's plain packaging measures). 15 Cuba argues that the addition of its Article 16.3 claim
relates to well-known registered trademarks, but th at this does not imply that the inclusion of the
Article 16.3 claim fails to represent a "natural ev olution" from Cuba's claim under Article 16.1.
Specifically, Cuba argues that Articles 16.1 an d 16.3 are closely related in that both are sub-
clauses of the same provision, and Article 16.3 de als with a "specific subset" of the subject matter
dealt with by Article 16.1.16
3.10. Cuba submits that the relationship be tween Article 16.3 and Article 16.1 of the TRIPS
Agreement is comparable to that between Arti cle XVII of the GATS and Article III:4 of the
GATT 1994. Specifically, Cuba states that Arti cle XVII of the GATS and Article III:4 of the
GATT 1994 impose national treatment obligations but relate to different sectors, namely services
and goods. Cuba argues that the fact that Articles 16.1 and 16.3 involve different (but
overlapping) subject matters (registered trademarks in general and well-known registered
trademarks) is no bar to a finding that a claim under one provision can reasonably be said to
evolve from the other provision.
3.11. In Cuba's view, the relationship betw een Article 16.3 and Article 16.1 of the TRIPS
Agreement is also comparable to the relationship between the provisions regulating specific action
against dumping and subsidisation in Article 18.1 of the Anti-Dumping Agreement and Article 31.1
of the SCM Agreement. Cuba submits that the rela tionship is also comparable to that between
Articles 7 and 10.6 of the Anti-Dumping Ag reement and Articles 17 and 20.6 of the SCM
Agreement. For Cuba, although those two sets of provisions regulate different aspects of trade
remedy investigations, consultations focussed on compliance with a narrow set of obligations could
have reasonably led to claims about compliance with a broader set of related obligations.
17 In the
present case, claims relating to a narrower category (the subset of well-known registered
trademarks) could reasonably be said to have evolved from claims relating to a broader category
(registered trademarks in general). 18 Thus, Cuba submits that its claim under Article 16.3 of the

11 Australia's comments on responses to Australia's requests for preliminary rulings, para. 22.
12 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 20.
13 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 21 (citing Cuba's request for consultations, p. 3).
14 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 21 (citing Cuba's request for the establishment of a panel, p. 3).
15 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 21.
16 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 21.
17 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 23 (citing Appellate Body Report, Mexico – Anti-Dumping Measures on Rice, paras. 142-143).
18 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 23.

TRIPS Agreement can reasonably be said to have evolved from its claim under Article 16.1 of the
TRIPS Agreement, which was included in its consultations request.19
3.12. Cuba argues that its claim under Article 6 bis of the Paris Convention (read with Article 2.1
of the TRIPS Agreement) is very closely connected with its claim under Article 16.3 of the TRIPS
Agreement. That provision is referenced in Arti cle 16.3 of the TRIPS Agreement and it deals with
well-known trademarks. Accordingly, Cuba submits that this claim can also be said to have
"reasonably evolved" from the claims presented in Cuba's consultations request under Article 16.1
of the TRIPS Agreement.
20
3.13. Cuba submits that whether or not the respondent is "surprised" at the inclusion of a
particular claim in a panel request is not material to the assessment of whether a claim included in
a panel request can be reasonably said to have ev olved from the claims set out in a consultations
request.
21 In any event, Cuba argues, the inclusion of a provision in Cuba's consultations request
specifying that Cuba "… reserves the right to raise additional claims or matters during the course
of consultations, and in any future request for panel proceedings"
22, and the fact that claims under
Article 16.3 of the TRIPS Agreement were raised in Ukraine's panel request and Indonesia's
consultations request (both of which pre-dated Cuba's panel request) should have alerted Australia
to the possibility that Cuba could include addition al claims in a subsequent panel request. Cuba
adds that Australia's contention that "the inclusion of a broad reservation does not permit the
addition of new claims that expand the scope or change the essence of a complaint" is not
supported by the authority to which Australia makes reference.
23
3.14. Cuba submits that one should focus on the request for consultations rather than the content
of the consultations themselves. 24 Regardless, Cuba accepts that it did not raise specific claims
under Article 16.3 of the TRIPS Agreement or Article 6 bis of the Paris Convention during the
consultations. Cuba notes that no specific legal claims were raised or discussed by either side
during the consultations, and that they instead focussed on factual matters. Likewise, no
settlement proposals were raised or discussed by either side during the consultations. Cuba argues
that, against this background, Australia's complain t that it was not afforded any opportunity to
consult with Cuba on any of these claims, or on whether the claims could be the subject of a
mutually agreed solution, and to establish the nature of Cuba's concerns "rings hollow". Cuba
notes that there is nothing that prevents Australia from pursuing a mutually agreed solution
outside the context of formal consultations.
25
3.15. Cuba notes that the mere fact that there are differences between two provisions does not
resolve whether one claim can reasonably have evolved from another, and that the Panel must
ascertain whether differences are so material that a claim under one provision cannot reasonably
be said to have evolved from a claim under another provision.
26
3.16. Regarding the difference between well-known trademarks under Article 16.3 of the TRIPS
Agreement, and all trademarks under Article 16.1 of the TRIPS Agreement, Cuba argues that these
subject matters overlap because the subject matter of Article 16.3 is fully contained within the
subject matter of Article 16.1. This demonstrates that Cuba's Article 16.3 and Article 16.1 claims
are closely connected, such that it is therefore perfectly reasonable to maintain that a claim
regarding the protection of the subset of well-known trademarks could have evolved out of

19 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 24.
20 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 25.
21 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 30.
22 Cuba's request for consultations, 3 May 2013, WT/DS458/1, p. 3.
23 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 31 (referring to Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 17
and fn. 15).
24 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
25 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 32.
26 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's panel
request, para. 5. (emphasis original)

consultations regarding the protection of trademarks as a whole pursuant to Article 16.1 of the
TRIPS Agreement. Cuba adds that the fact that only certain trademarks meeting "specific legal
tests" are treated as well-known trademarks does not alter the fact that they are a "specific
subset" of trademarks as a whole.
27
3.17. Cuba argues that, even if the Panel were to decide that Articles 16.3 and 16.1 deal with
altogether different subject matters, it does not follow that the Mexico – Anti-Dumping Measures
on Rice test is not met. Cuba points out that the panel in China – Publications and Audiovisual
Products ruled that a claim relating solely to the subject matter of goods (Article III:4 of the
GATT 1994) had reasonably evolved from a claim rela ting solely to the subject matter of services
(Article XVII of the GATS), on th e basis that a single measure could affect those distinct subject
matters.28 Cuba argues that the same consideration applies here, as Australia's plain packaging
measures affect ordinary trademarks as well as well-known trademarks. Therefore, Cuba submits
that even if Articles 16.3 and 16.1 of the TRIPS Agreement pertained to entirely different subject
matters, this "would not forestall a conclusion that Cuba's claim under Article 16.3 involves a
reasonable evolution from its claim under Article 16.1".29
3.18. Regarding the difference between the scope of protection (i.e. that Article 16.3 requires that
well-known trademarks be protected with respect to use on dissimilar goods and services while
Article 16.1 does not impose an equivalent requirement), Cuba recognizes this difference but
considers that, despite this difference, its claim under Article 16.3 of the TRIPS Agreement
represents a reasonable evolution from the cl aim under Article 16.1 of the TRIPS Agreement
included in its consultations request. Cuba argues that Mexico – Anti-Dumping Measures on Rice
does not imply that only provisions imposing identical obligations will be treated as having a
sufficient nexus with each other. Cuba argues that the Appellate Body ruled that a claim under
Article 18.1 of the Anti-Dumping Agreement had naturally evolved from claims under Articles 7
and 10.6 of the Anti-Dumping Agreement, notw ithstanding the fact that the scope of the
obligations under Article 18.1 of the Anti-Dumping Agreement was different from the scope of the
obligations under Articles 7 and/or 10.6 of the Anti-Dumping Agreement.
30
3.19. Cuba argues that the connections between Articles 16.1 and 16.3 of the TRIPS Agreement
are even closer than the connections between the provisions considered by the Appellate Body in
Mexico – Anti-Dumping Measures on Rice . In support of this, Cuba argues that Article 16.3 deals
with a subset of the trademarks that are dealt with in Ar ticle 16.1, and that consultations relating
to the protection of trademarks in general (under Article 16.1 of the TRIPS Agreement) could
easily evolve into a consideration of the protection of the subset of well-known trademarks (under
Article 16.3 of the TRIPS Agreement). Moreover, both of these claims relate to the same measures
(namely, Australia's plain packaging measures) and arise from sub-clauses of Article 16 of the
TRIPS Agreement. 31 Cuba submits that these connections establish that its claim under Article
16.3 represents a reasonable or natural evolution from the legal basis contained in its
consultations request.32
3.20. Cuba also notes that the panel report in China – Publications and Audiovisual Products is not
inapposite, as Australia submits, because that pa nel report does not indicate that a reasonable
evolution will only be found where either (1) the scope of the "obligations at issue" is identical or
(2) the subject matter is identical. Cuba also refers to Australia's reliance on the panel reports in

27 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, paras. 6-7.
28 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, para. 8 (citing Panel Report, China – Publications and Audiovisual Products, paras. 7.127-
7.130).
29 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, para. 8
30 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, paras. 9-11 (citing Appellate Body Report, Mexico – Anti-Dumping Measures on Rice, paras.
142-143).
31 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, para. 12.
32 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, para. 13.

EC – Fasteners (China) and China – Broiler Products , and argues that neither case supports
Australia's arguments.33
3.21. Regarding Australia's claims of prejudice, Cuba argues that Australia's responses fail to
provide a demonstration of how Australia would in fact suffer prejudice in preparing its defence if
Cuba were permitted to advance a claim under Article 16.3 of the TRIPS Agreement. Moreover,
Australia provides no support for its view that, in assessing Australia's assertions that it would
suffer "concrete prejudice" in preparing its defence, the Panel must ignore material facts. Cuba
cites one such fact to be that Australia has been able to prepare, without any apparent prejudice
its defence to the Article 16.3 claims brought by the other complainants, and the fact that
Australia will enjoy "abundant time" to prepare its defence under the timetable.
34 Cuba submits
that a ruling in favour of Australia would not avert any concrete procedural prejudice to Australia,
and would not alter the task of the Panel because it would still have to resolve claims under Article
16.3 of the TRIPS Agreement advanced by Indonesia and Ukraine. It would also not alter the
compliance obligations of Australia if the relevant claims were successful, as Australia would have
to implement them on an MFN basis.
3.1.2 Main arguments of the third parties
3.22. Argentina submits that it is "difficult to see a natural evolution" from Article 16.1 to
Article 16.3 of the TRIPS Agreement, as the prot ectable subject matter is different under the two
provisions. More specifically, Argentina considers that Article 16.3 provides broader protection for
those trademarks that are well-known than is prov ided by Article 16.1 of the TRIPS Agreement for
trademarks that are not well-known. Moreover, Article 16.3 deals not so much with the potential
capacity of a trademark to distinguish between one product or service and another, as in the case
of Article 16.1, but with the protection of a well-known trademark from indiscriminate use that
might dilute its effect and attractiveness by being applied to any type of good or service.
35
3.23. Brazil36 submits that in order to fulfill the substantive conditions of Article 6.2, the panel
request must identify the measures targeted in the dispute, and must provide a brief summary of
the legal basis of the claims. These two requirem ents set the limits of the WTO adjudicating
bodies' jurisdiction, but also provide the partie s and third parties with sufficient information
concerning the claim in order to allow them an opportunity to respond to the complainant's case.
Brazil submits that Article 6.2 does not require precise and exact identity between the specific
measures that were subject to consultations and the measures identified in the panel request. A
panel's terms of reference may include a measure properly identified in the panel request even if
that measure was not included in the consultations request, provided that doing so does not
change the "essence" of the dispute. This allows Members the flexibility to include in the panel
request any new piece of legislation related to the measures at issue that may have been enacted
after the consultation request. Brazil adds that after better understanding the functioning of the
measure at issue, the complainant may add new claims to the panel request provided such claims
do not change the essence of the dispute.
37
3.24. Canada argues that the panel must exercise caution in its approach to determining whether
a panel request improperly expands the scope of the dispute or changes the essence of the
complaint raised in consultations. A narrow interpre tation of what constitutes an expansion of the
dispute or a change in the essence of the complaint could lead to complainants citing an
unnecessarily long list of provisions in consultation requests, and could result in consultations
being reduced to a perfunctory exercise which woul d thus frustrate the opportunity to define and
delimit the scope of the dispute. Canada also argues that an overly broad interpretation as to what
constitutes an expansion of the dispute or a change in the essence of the complaint could result in
complainants withholding claims from the consultation request only to include them in the panel
request in order to obtain a strategic advantage over the responding party. Such a result would
undermine due process. Canada asks that the panel carefully examine how best to balance the

33 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, paras. 16-17.
34 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, para. 33.
35 Argentina's third-party comments on Australia's requests for preliminary rulings, paras. 32-36.
36 Brazil's third-party comments on Australia's requests for preliminary rulings, para. 2.
37 Brazil's third-party comments on Australia's requests for preliminary rulings, paras. 3-8.

interests at play and preserve the flexibility that is necessary for the proper functioning of the
dispute settlement process.38
3.25. The Dominican Republic agrees with Cuba that claims against Australia's plain packaging
measures related to well-known trademarks constitu te a "natural evolution" of the claims related
to registered trademarks under Article 16.1 of the TRIPS Agreement. This is because it "is logical
that Cuba would, after having consulted with Australia about the facts of the plain packaging
measures, understand that they affect not only th e broad set of registered trademarks, but also
the narrower subset of well-known trademarks pr otected by Article 16.3 of the TRIPS Agreement
and Article 6bis of the Paris Convention."
39 The Dominican Republic submits that the consultations
between Australia and Cuba could have le d to one of several outcomes, including inter alia (i) a
realization by Cuba that the claims under Article 16.1 of the TRIPS Agreement could not be
justified in view of the facts of the plain packaging measures; or (ii) a realization by Cuba that the
claims under Article 16.1 of the TRIPS Agreement were merited and, in fact, should naturally
encompass the subset of trademarks known as well-known trademarks, given the particular
impact of the plain packaging measures. The Domi nican Republic argues that, in this case, the
consultations led to the latter realization, and that this constitutes a "natural evolution" of the
claims after consultations.
40
3.26. In addition, the Dominican Republic argues that the extension of the claims from
Article 16.1 to include Article 16.3 of the TRIPS Agreement involves a subset of the group of
trademarks that were already subject to claims under Article 16.1. Thus, the inclusion of the
Article 16.3 claim involves the straightforward application of the principle a maiore ad minus ,
whereby the inclusion of an Article 16.1 claim regarding the protection of a large group of
trademarks is extended naturally and reasonably to an Article 16.3 claim regarding the protection
of a smaller subset of those same trademarks.41
3.27. The European Union refers to its comments in relation to Ukraine's panel request
regarding whether the evolution of a claim changes the essence of that claim. 42 However, the
European Union notes that Article 16.3 of the TRIPS Agreement provides that Article 6 bis of the
Paris Convention shall apply, mutatis mutandis, with respect to goods and services that are "not
similar". By contrast, Article 16.1 of the TRIPS Ag reement refers to goods and services which are
"identical or similar". The European Union observes that, at this stage of the proceedings, it
remains unclear whether or not all that is involved is a change from the more general to the more
specific, or whether or not the scope of the dispute is being enlarged. The European Union submits
that, if it is also unclear to the Panel, then it may wish to consider reserving a ruling on this issue
until a later stage of the proceedings.
43
3.28. Guatemala considers that Articles 2.1 and 16.3 of the TRIPS Agreement and Article 6 bis of
the Paris Convention appear to be an "evo lution" that would not change the "essence" of the
original claim in the request for consultations. Gu atemala also agrees with Cuba that Article 16.3
and Article 16.1 are closely related as both provis ions are sub-clauses of the same provision and
the latter deals with a "specific subset" of the subject matter dealt with by the former. Australia
acknowledges this as well.
44 Guatemala nonetheless submits that Australia's preliminary ruling
request is premature because Cuba should have had the opportunity to submit its first written
communication to determine whether the scope of the claim has been enlarged.45
3.29. Honduras considers that Cuba's claim against Australia's plain packaging measures with
respect to well-known marks reflects a "reasonable evolution" of the legal basis of the claims set
out in its consultations request. Honduras argues that the test to determine whether additional
treaty provisions may be included in the panel's terms of reference should be whether there is a

38 Canada's third-party comments on Australia's requests for preliminary rulings, paras. 3-9.
39 The Dominican Republic's third-party comments on Australia's requests for preliminary rulings,
para. 21.
40 The Dominican Republic's third-party comments on Australia's requests for preliminary rulings,
paras. 22-23.
41 The Dominican Republic's third-party comments on Australia's requests for preliminary rulings,
para. 24.
42 The European Union's third-party comments on Australia's requests for preliminary rulings, para. 34.
43 The European Union's third-party comments on Australia's requests for preliminary rulings, para. 35.
44 Guatemala's third-party comments on Australia's requests for preliminary rulings, para. 3.8.
45 Guatemala's third-party comments on Australia's requests for preliminary rulings, para. 3.9.

sufficient nexus between the treaty provision cited in the request for consultations and the new
treaty provision cited in the panel request. Ho nduras argues that there is a sufficient nexus
between the provisions cited in Cuba's consultations request and those new provisions cited in
Cuba's panel request, because (as noted by Cuba), Article 16.1 and Article 16.3 are "closely
related as they are both sub-clauses of the same provision" and the "latter deals with a specific
subset [namely, well-known marks] of the subj ect matter of the former". Similarly, Article 6 bis of
the Paris Convention (read together with Article 2.1 of the TRIPS Agreement) also deals with the
same specific subset of well-known marks.
46
3.30. Mexico submits that there is a delicate balance between the request for consultations and
the panel request, and this should be maintained. The two requests are very closely related but
cannot have the same purpose or the same effects. Mexico agrees that the relationship is a close
one, requiring both requests to be of the same na ture, and an analysis of the two requests should
not be so rigid as to make it impossible to reflect the evolution of the dispute, nor totally lax so as
to include unrelated claims or measures.
47
3.1.3 Analysis by the Panel
3.31. The question we must consider is whether Cuba's claims under Articles 16.3 of the TRIPS
Agreement and Article 6 bis of the Paris Convention (through Article 2.1 of the TRIPS Agreement)
are properly before us or whether we should, as Australia requests, exclude them from
consideration on the basis that they are not properly within our terms of reference.
3.32. The basis for Australia's request is the fact that these claims were not included in Cuba's
request for consultations. This question therefor e involves the relationship between the claims in
the request for consultations and the panel request. We first consider the applicable legal
provisions in this respect, before turning to an assessment of Australia's request in the light of
these requirements.
3.1.3.1 Relationship between the claims in the request for consultations and the panel
request
3.33. We first note that our terms of reference, in accordance with Article 7.1 of the DSU, are the
following:
To examine, in the light of the relevant pr ovisions of the covered agreements cited by
the parties to the dispute, the matter referred to the DSB by Cuba in document
WT/DS458/14 and to make such findings as will assist the DSB in making the
recommendations or in giving the rulings provided for in those agreements.
48
3.34. Our terms of reference are therefore defined with reference to Cuba's panel request.
3.35. As described by the Appellate Body, pursuant to Article 7 of the DSU, a panel's terms of
reference are governed by the request for establ ishment of a panel, and Article 6.2 of the DSU
sets forth the requirements applicable to such requests.
49 Article 6.2 provides that:
The request for the establishment of a panel shall be made in writing. It shall indicate
whether consultations were held, identify the specific measures at issue and provide a
brief summary of the legal basis of the complaint sufficient to present the problem
clearly. (Emphasis added).
3.36. We note that, although Article 6.2 requires the complainant to indicate in its panel request
"whether consultations were held", it does not require the measures and claims identified in the
panel request as basis for the complaint to be identical to those identified in the consultations
request. Articles 4.4 and 6.2 both refer to the iden tification of the measures and claims at issue,
but do not impose exactly the same requirements in this respect: a request for consultation under

46 Honduras' third-party comments on Australia's requests for preliminary rulings, paras. 34-37.
47 Mexico's third-party comments on Australia's requests for preliminary rulings, paras. 23-26.
48 Constitution of the Panel established at the request of Cuba, Communication from the Secretariat,

49 See Appellate Body Report, US – Carbon Steel, paras. 124-125.

Article 4.4 must include an "identification of the measures at issue and an indication of the legal
basis of the complaint", while the panel request that follows must "identify the specific measures
at issue and provide a brief summary of the legal basis of the complaint" (emphases added).
3.37. As described by the Appellate Body, "Articles 4 and 6 … set forth a process by which a
complaining party must request consultations, and consultations must be held, before a matter
may be referred to the DSB for the establishment of a panel". 50 As the Appellate Body has also
clarified, it can be expected that information obtained during the course of consultations may
enable the complainant to focus the scope of the matter with respect to which it seeks
establishment of a panel. 51 In this respect, we note the Appellate Body's observation in Mexico –
Anti-Dumping Measures on Rice concerning the term "legal basis", as used in both Articles 4.4 and
6.2 of the DSU:
It does not follow from the use of the same term in both provisions, however, that the
claims made at the time of the panel request must be identical to those indicated in
the request for consultations. Indeed, instead of such a rigid approach, we consider
that the dispute settlement mechanism, which generally requires that a panel request
be preceded by consultations, allows for a measure of flexibility to Members in
subsequently formulating complaints in panel requests.
52
3.38. We also note the Appellate Body's further statement that:
Reading the DSU … to limit the legal basis set out in the panel request to what was
indicated in the request for consultations, would ignore an important rationale behind
the requirement to hold consultations – namely, the exchange of information
necessary to refine the contours of the disp ute, which are subsequently set out in the
panel request. In this light, we consider th at it is not necessary that the provisions
referred to in the request for consultations be identical to those set out in the panel
request, provided that the "legal basis" in the panel request may reasonably be said to
have evolved from the "legal basis" that formed the subject of consultations . In other
words, the addition of provisions must not have the effect of changing the essence of
the complaint.
53 (Emphasis added)
3.39. In sum, the DSU does not require "precise and exact identity" 54 between the measures and
claims identified in the consultation request and those identified in the subsequent panel request,
and it is legitimate for the claims forming the legal basis of the complaint to evolve as a result of
the consultations. Nonetheless, claims added in the panel request must not "have the effect of
changing the essence of the complaint".
55 This will not be the case if such additional claims can
reasonably be said to have evolved from the legal basis identified in the request for consultations.
3.40. We note that the parties have both referre d to the rulings cited above in their discussion of
this issue and that, as Australia observes, the legal framework for addressing Australia's requests
in respect of "new claims" does not appear to be disputed.
56 However, the parties disagree as to
whether, in the circumstances of this dispute, Cuba 's additional claims have the effect of changing
the essence of the complaint.
3.41. With these considerations in mind, we examine below whether the additional claims under
Article 16.3 of the TRIPS Agreement and 6 bis of the Paris Convention (through Article 2.1 of the
TRIPS Agreement) introduced by Cuba in its panel request have the effect of "changing the
essence of the complaint".

50 Appellate Body Report, Brazil – Aircraft, para. 131.
51 See Appellate Body Report, Brazil – Aircraft, para. 132.
52 Appellate Body Report, Mexico – Anti-Dumping Measures on Rice, para. 136.
53 Appellate Body Report, Mexico – Anti-Dumping Measures on Rice, para. 138. We note that this ruling
was subsequently referred to by the panels in China – Publications and Audiovisual Products (para. 7.115), EC
54 See Appellate Body Report, Brazil - Aircraft, para. 132.
55 Appellate Body Report, Mexico – Anti-Dumping Measures on Rice, para. 138.
56 See Australia's comments on responses to Australia's requests for preliminary rulings, para. 5.

3.1.3.2 Whether Cuba's additional claims under Article 16.3 of the TRIPS Agreement
and Article 6 bis of the Paris Convention (through Article 2.1 of the TRIPS Agreement)
change the essence of the complaint
3.42. As described above, the inclusion of new claims in the panel request would not have the
effect of "changing the essence of the complaint" if the legal basis of the panel request can
reasonably be said to have evolved from the lega l basis that formed the subject of consultations.
We must therefore compare the legal basis that formed the subject of consultations in this dispute
and that of Cuba's panel request.
3.43. Cuba's request for consultations included, inter alia, the following claims:
Article 2.1 of the TRIPS Agreement read with Article 6 quinquies of the Paris
Convention for the Protection of Industrial Property (as amended by the Stockholm
Act of 1967), because trademarks registered in a country of origin outside Australia
are not protected by Australia "as is";
and:
Article 16.1 of the TRIPS Agreement, because Australia prevents owners of registered
trademarks from enjoying the rights conferred by a trademark.
3.44. In its panel request, Cuba added the following claims:
Article 2.1 of the TRIPS Agreement (…) and (ii) Article 6 bis of the Paris Convention for
the Protection of Industrial Property (a s amended by the Stockholm Act of 1967),
because Australia fails to protect "well-known" trademarks;
and:
Article 16.3 of the TRIPS Agreement because Australia prevents owners of registered
trademarks that are "well-known" or might become "well-known" from enjoying the
rights conferred by such a trademark. […].
3.45. As described above, Australia considers that these additional claims, which relate to the
protection of well-known trademarks, improperly introduce new obligations and new subject
matter within the scope of the dispute. Cuba co nsiders that they can be considered to have
evolved from its initial claim under Article 16.1, which also concerns the rights conferred by
trademarks. It argues that "the subject matter of Article 16.3 is fully contained within the subject
matter of Article 16.1". It adds that the fact that only certain trademarks meeting "specific legal
tests" are treated as well-known trademarks does not alter the fact that they are a "specific
subset" of trademarks as a whole.
57 Cuba also argues that its claim under Article 6 bis of the Paris
Convention (read with Article 2.1 of the TRIPS Agre ement) is very closely connected with its claim
under Article 16.3 of the TRIPS Agreement and can accordingly also be said to have "reasonably
evolved" from the claims presented in its consultations request under Article 16.1 of the TRIPS
Agreement.
3.46. We first note that, as observed by Cuba, wherever an additional legal provision is raised in
the panel request, it can be expected that some differences may exist between the specific legal
obligation or obligations it contains and the obligations contained in the provisions referred to in
the consultations request.
58 The identification of such differences alone would not automatically
lead to a conclusion that the additional claims fall outside the scope of the panel's terms of
reference. Such an approach would amount to requ iring identity between the legal basis identified
in the consultation and panel requests, which, as described above, is not required. Rather, our
assessment must take into account the elements that form the basis of the complaint at issue as a
whole. In this respect, we agree with the panel in China – Broiler Products that "at the very least",
some connection must exist between the claims set forth in the panel request and those identified

57 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, paras. 6-7.
58 See Cuba's response to Australia's preliminary Ruling Request, para. 18.

in the request for consultations "in terms of either the provisions cited, the obligation at issue or
issue in dispute, or the factual circumstances leading to the alleged violation". 59 With these
observations in mind, we now consider the relationship between the legal basis that formed the
basis of consultations and the legal basis of Cuba's panel request.
60
3.47. In its request for consultations, Cuba first identifies the measures at issue ("the Plain
Packaging Measures"), which it describes as regulating "the appearance and form of retail
packaging used in connection with sales of cigars, cigarettes and other tobacco products" and "the
appearance and form of the tobacco products themselves" . The measures identified include "The
Trade Marks Amendment (Tobacco Plain Packaging) Act 2011". Cuba further identifies a number of
specific requirements of the measures in respec t of the appearance and form of packaging of
tobacco products and of tobacco products themselv es. In the second part of its request, Cuba
identifies various provisions of the TRIPS and TBT Agreements and GATT 1994 as the legal basis of
its complaint. The cited provisions include trademark-related provisions of the TRIPS Agreement,
in particular Article 16.1 relating to the rights conferred on registered trademarks. Cuba explains
that the measures at issue appear to be in violation of Article 16.1 of the TRIPS Agreement
"because Australia prevents owners of registered trademarks from enjoying the rights conferred by
a trademark".
3.48. Cuba's request for consultations therefore provided an "indication" that the matter consulted
on included matters relating to the consistency of Australia's "Plain Packaging Measures" with
certain TRIPS obligations, including how these measures affect "the rights conferred by a
trademark" under that Agreement. The further claims introduced in Cuba's panel request under
Articles 6bis of the Paris Convention and Article 16.3 of the TRIPS Agreement relate to the specific
protection accorded to well-known trademarks under the TRIPS Agreement, in relation to the same
measures.
3.49. Article 16 of the TRIPS Agreement as a whole relates, as its title indicates, to "Rights
conferred" by trademarks. Article 16.1 (which was referred to in Cuba's request for consultations)
requires Members to confer an exclusive right to the owner of a registered trademark to prevent
unauthorized third parties from using identical or similar signs in the course of trade for goods or
services identical or similar to those in respect of which the trademark is registered, where such
use would result in a likelihood of confusion. Under Article 6 bis of the Paris Convention (through
Article 2.1 of the TRIPS Agreement), well-known trademarks enjoy additional protection: the
registration of a sign as a trademark must be re fused or cancelled, and its use prohibited in a
Member, if that trademark is liable to cause confusion with a mark that is considered well known in
that Member and used for identical or similar goods. This protection must be available whether or
not the well-known trademark is registered in th e country where protection is claimed, and such
refusal, cancellation or prohibition of use is to be effected ex officio if the Member's legislation so
permits, or at the request of an interested pa rty, such as the owner of the well-known mark.
Article 16.3 extends the application of Article 6 bis to the protection of well-known trademarks

59 Panel Report, China – Broiler Products, para. 7.224. We note also the observations of the panel in
China – Publications and Audiovisual Products that "[w]hile we agree with the United States that the products
and activities governed by the challenged measures under both claims is relevant to a determination of
whether one has evolved from the other, these are not the only considerations: a panel must also examine the
types of products, measures, the obligations cited, and the relationship between those obligations referred to
in the consultations request and those referred to in the panel request" (Panel Report, China – Publications and
Audiovisual Products, para. 7.122).
60 In considering the "legal basis that formed the subject of consultations", we rely on the request for
consultations itself. We note in this respect the Appellate Body's observations in US – Upland Cotton:
"Examining what took place in consultations would seem contrary to Article 4.6 of the DSU, which provides that
'[c]onsultations shall be confidential, and without prejudice to the rights of any Member in any further
proceedings.' Moreover, it would seem at odds with the requirements in Article 4.4 of the DSU that the request
for consultations be made in writing and that it be notified to the DSB. In addition, there is no public record of
what actually transpires during consultations and parties will often disagree about what, precisely, was
discussed. […]" (Appe llate Body Report, US – Upland Cotton, para. 287). We also note the observations of the
panel in EC – Fasteners, to the effect that "it would not be appropriate to look into what was actually discussed
between China and the European Union in the consultations between the parties" and that it would therefore
limit its analysis regarding the scope of consultations to the text of China's request for consultations" (Panel
Report, EC – Fasteners, para. 7.26). See also Appellate Body Report, Brazil – Aircraft, para. 131 and Panel
Report, Korea – Alcoholic Beverages, paras. 7.65 and 10.19.

against use on goods or services that are not similar to those in respect of which a trademark is
registered, subject to certain conditions.61
3.50. We acknowledge that the basis for granting protection is not identical under Article 6 bis and
Article 16.1, in that a well-known trademark within the meaning of Article 6 bis may or may not be
registered. We also acknowledge that, as described above, the requirements that will trigger
protection are different under Articles 16.1 and 16.3 of the TRIPS Agreement and Article 6 bis of
the Paris Convention. However, we also note that the protectable subject matter under all of these
provisions is the same distinctive sign, as defi ned under Article 15.1 of the TRIPS Agreement. We
further note, with respect to Article 16.1 and Article 6 bis of the Paris Convention, that the aim of
both forms of protection is to allow the owner of the trademark to be protected from unauthorized
use of that sign on similar goods. We note in this respect that in its request for consultations, Cuba
had described its Article 16.1 claim generally with reference to "the rights conferred by a
trademark".
3.51. As regards Article 16.3, we note in addition that this claim derives from another sub-
paragraph of the provision (Article 16, on Rights Conferred by trademarks) that was the basis for
Cuba's original Article 16.1 claim, and also relates to the rights conferred specifically by registered
trademarks. In its panel request, Cuba further provides the following narrative: "Article 16.3 of the
TRIPS Agreement because Australia prevents owners of registered trademarks that are
'well-known' or might become 'well-known' fr om enjoying the rights conferred by such a
trademark". This explanation makes clear that Cuba's concern under this claim is with the
implications of the challenged measures on the ability to protect registered trademarks, which
were already the object of its initial Article 16.1 claim, against the type of use covered by Article
16.3. Although Article 16.3 relates to the use of a well-known trademark on goods and services
that are not similar to those in respect of which it is registered, the aim of this provision is also to
safeguard the interests of the owner of that registered trademark.
62
3.52. We further note that it is not disputed that all the claims at issue relate to the same set of
measures, which regulate, inter alia, the use of trademarks on tobacco products. The subject of
the rights conferred by trademark protection und er the TRIPS Agreement in relation to these
measures was clearly part of the legal basis that formed the subject of the consultations, and, in
our view, it is reasonable to consider that additional related issues concerning the impact of these
measures on the rights conferred in respect of well-known trademarks under the same Agreement
could have evolved from that legal basis.
3.53. In light of the above, we consider that the additional claims introduced by Cuba in its panel
request are closely related to those that formed the legal basis of its request for consultations and
can, in our view, reasonably be said to have evolved from the legal basis that formed the subject
of consultations. We are therefore not persuaded that, in the circumstances of this dispute, Cuba's
claims under Article 16.3 of the TRIPS Agreement and Article 6bis of the Paris Convention (through
Article 2.1 of the TRIPS Agreement) have the effect of "changing the essence of the complaint".
We consider that their addition in Cuba's panel request remains within the bounds of the "measure
of flexibility" accorded to Members in formulating their complaints in their panel request.
3.54. We therefore find that Cuba's claims under Article 16.3 of the TRIPS Agreement and
Article 6bis of the Paris Convention (through Article 2.1 of the TRIPS Agreement) do not fall
outside our terms of reference and reject Australia's request in respect of these claims.

61 Article 16.2 (which is not specifically identified by Cuba as a legal basis of its complaint), extends the
protection provided under Article 6bis of the Paris Convention to well-known service marks, and sets out
elements for determining whether a trademark is well known. The determination of whether a trademark is
well known should take into account "the knowledge of the trademark in the relevant sector of the public,
including knowledge in the Member concerned which has been obtained as a result of the promotion of the
trademark".
62 We note that the Appellate Body has explained that under Article 6.2 of the DSU, "the identification of
the product at issue is generally not a separate and distinct element of a panel's terms of reference; rather, it
is a consequence of the scope of application of the specific measures at issue." (Appellate Body Report, EC –
Chicken Cuts, para. 165).

3.2 Claims under Articles 15.1 and 17 of the TRIPS Agreement
3.55. As described above, Cuba's panel request also includes claims under Articles 15.1 and 17 of
the TRIPS Agreement, which were not mentioned in its request for consultations. Australia
requests the Panel to exclude them from its terms of reference.
3.2.1 Main arguments of the parties
3.2.1.1 Australia
3.56. Australia argues that Cuba's panel request contains fundamentally new claims that were not
notified in its request for consultations, including Cuba's claim regarding Articles 15.1 and 17 of
the TRIPS Agreement.
63 Australia argues that each of these "additional claims" has taken Australia
by surprise, and that Cuba did not raise its conc erns in relation to any of these claims with
Australia during formal consultations. 64 Australia points out that, in the three-year period from
April 2011, when Australia notified its measure to the WTO, to April 2014, when Cuba filed its
panel request, Cuba did not raise with Australia any concerns that the tobacco plain packaging
measure was inconsistent with any of these obligations. Australia argues that it clearly was not
afforded any opportunity to consult with Cuba on any of these claims, or to assess whether the
claims could be the subject of a mutually agreed solution, before Cuba resorted to further dispute
settlement action.
65
3.57. Australia further submits that "Cuba's new and additional claim under Article 15.1 of the
TRIPS Agreement also attempts to expand the sc ope of the dispute". Australia explains that,
although both Article 15.1 and Article 15.4 concern eligibility for the registration of trademarks,
Article 15.1 "contains a number of obligations that are beyond the scope of Article 15.4". Thus,
while Article 15.4 requires that the "nature of the goods or services to which a trademark is to be
applied shall in no case form an obstacle to regi stration of the trademark", Article 15.1 in contrast
provides, inter alia , that certain kinds of signs shall be capable of constituting a trademark and
also that such signs shall be eligible for registration as trademarks. Australia argues that, in
defending Cuba's new and additional Article 15.1 claim, it will need to defend its tobacco plain
packaging measure with respect to additional registration eligibility requirements that were not
raised in Cuba's consultations request or during consultations.
66
3.58. Australia also argues that Cuba's claim under Article 17 of the TRIPS Agreement was not
included in its consultations request. Australia notes that Article 17 sets out exceptions with
respect to the rights conferred by a trademark, and that it is unclear how or why Australia's
measure breaches an exception (because it relates to an exception rather than an obligation), and
that Cuba's Article 17 claim is fundamentally di fferent and cannot be said to be of the same
"essence" as Cuba's other claims under the TRIPS Agreement.
67
3.59. Australia welcomes Cuba's statement68 that it will not pursue claims under Articles 15.1 and
17 of the TRIPS Agreement.69 On this basis, Australia submits that it is appropriate for the Panel to
rule that these claims fall outside its terms of reference.70
3.2.1.2 Cuba
3.60. Cuba submits, in relation to Articles 17 and 15.1 of the TRIPS Agreement, that it will not
seek to make such claims in these proceedings and that no purpose is served in resolving

63 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 10.
64 In its request for consultations, Cuba cited Articles III:4 and IX:4 of the GATT 1994, Articles 2.1 and
2.2 of the TBT Agreement; and Articles 2.1 (read with Articles 6quinquies and 10bis of the Paris Convention for
the Protection of Industrial Property), 3.1, 15.4, 16.1, 20, 22.2(b), and 24.3 of the TRIPS Agreement. See

65 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 11.
66 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 15.
67 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 16.
68 These assurances were given by Cuba in its response to Australia's requests for preliminary rulings
and are discussed below.
69 Australia's comments on responses to Australia's requests for preliminary rulings, para. 24.
70 Australia's comments on responses to Australia's requests for preliminary rulings, para. 25.

Australia's objection that these claims were not identified in Cuba's consultations request. 71 Cuba
notes that its decision regarding Article 17 is in light of Australia's statement that it views Article
17 of the TRIPS Agreement as an exception.
72 In relation to Article 15.1, Cuba notes that it refers
to this provision only to provide context for the Ar ticle 15.4 claim, but that Cuba does not seek to
make a separate and distinct claim under Article 15.1 of the TRIPS Agreement. 73 Notwithstanding
this assertion, Cuba submits that if the Panel is minded to enter into this issue, Cuba's position is
that any independent claim under Article 17 of the TRIPS Agreement can be said to have
"reasonably evolved" from the claim presented in Cuba's consultation request under Article 16.1 of
the TRIPS Agreement.
74
3.61. Cuba therefore argues that the appropriate course of action is for the Panel to decline to
rule on Australia's objections to these claims as they are moot.75
3.2.2 Main arguments of the third parties
3.62. The Dominican Republic notes Cuba's statement that it is not raising claims under these
provisions and argues that Cuba refers to Article 15.1 "only to provide context for an Article 15.4
claim", such that Cuba's reference to Article 15.1 is properly to be regarded as part of the
argument in support of its Article 15.4 claim rather than as a claim, in and of itself. The Dominican
Republic notes that a Member has no obligation to set out arguments in support of its claims in its
panel request.76
3.63. The European Union refers to the preliminary ruling in United States – Countervailing and
Anti-Dumping Measures on Certain Products from China, where China withdrew certain claims, and
the Panel decided not to rule on a request for a preliminary ruling relating to those withdrawn
claims.77
3.64. Guatemala suggests that the Panel consider Cuba's claims under Article 15.1 and 17 of the
TRIPS Agreement as withdrawn, such that a ruling on these objections would be unnecessary.78
3.65. Honduras notes that a Member is free to include additional provisions in its panel request
that it may wish to use as context, but that there is no obligation that a Member include such a
provision in its panel request.
79
3.2.3 Analysis by the Panel
3.66. As described above, Cuba has expressly indicated that it does not intend to raise separate
claims based on Articles 15.1 and 17 of the TRIPS Agreement in these proceedings. In light of this
statement, we consider it unnecessary to make a determination as to whether its claims under
these provisions are properly before us, because doing so "would not serve to 'secure a positive
solution' to this dispute".80

71 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 26.
72 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 27.
73 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 28.
74 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 29.
75 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's panel
request, para. 26.
76 The Dominican Republic's third-party comments on Australia's requests for preliminary rulings, para.
10 (referring to Appellate Body Report, EC – Selected Customs Matters, para. 130).
77 The European Union's third-party comments on Australia's requests for preliminary rulings, para. 36
(referring to Preliminary Ruling, US – Countervailing and Anti-Dumping Measures (China), paras. 3.1-3.16).
78 Guatemala's third-party comments on Australia's requests for preliminary rulings, paras. 4.8-4.9.
79 Honduras' third-party comments on Australia's requests for preliminary rulings, paras. 39-41.
80 See Appellate Body Report, Japan – Apples, para. 215 (quoting Article 3.7 of the DSU) and Appellate
Body Report, Mexico – Anti-Dumping Measures on Rice, para. 140 (citing Appellate Body Report, Japan –
Apples, para. 215).

3.67. We therefore take note of Cuba's indication that it will not seek to make claims under
Articles 15.1 and 17 of the TRIPS Agreement in th ese proceedings and decline to rule on whether
claims under these provisions are, as argued by Australia, outside of our terms of reference.
3.68. In making this determination, we take no position on the interpretation of either provision
or their potential role in our examination of other claims properly before us in these proceedings.
4 PRESENTATION OF THE PROBLEM
4.1. Australia argues that Cuba's panel request fails to present the problem clearly in respect of
its claims under Articles 15.1 and 17 of the TRIP S agreement and requests the Panel to rule that
these claims are therefore not within its terms of reference.
4.2. As described above, Cuba has expressly indicated that it does not intend to raise separate
claims based on these provisions. In light of this statement, we consider it unnecessary to make a
determination as to whether Cuba's panel request "presents the problem clearly" in relation to
these claims, because doing so "would not serve to 'secure a positive solution to this dispute'".
81
4.3. In making this determination, we take no po sition on the interpretation of either provision or
their potential role in our examination of other claims properly before us in these proceedings.
5 IDENTIFICATION OF THE MEASURES AT ISSUE
5.1. Australia requests that the Panel make a preliminary ruling excluding from its terms of
reference "the non-exhaustive list of related me asures and measures that 'complement or add to'
the measures explicitly identified in Cuba's pa nel request", on the basis that the panel request
does not identify the specific measures at issue, contrary to the requirements of Article 6.2 of the
DSU.
82
5.2. We first describe below the arguments of the parties and third parties, before proceeding
with an assessment of Australia's request.
5.1 Main arguments of the parties
5.1.1 Australia
5.3. Australia submits that it is crucial that a complainant identify in its panel request the specific
measures at issue as required by Article 6.2 of the DSU because this sets the panel's terms of
reference and also serves an important due process objective.83 It argues that a complaining party
must establish the identity of the precise measures at issue. 84 It further submits that , in
determining consistency with Article 6.2 of the DSU, a panel must "analyse whether the measures
that the complaining party is contesting were identified, such that the respondent party received
'adequate notice'" of the measures at issue.
85
5.4. Australia argues that Cuba's request does no t identify the specific measures at issue in two
key ways. Australia challenges: (i) the use of th e term "including", which defines the "related
measures" in a non-exhaustive way; and (ii) the attempt to include unspecified measures that
"complement or add to" those explicitly named in the panel request ("complementary or additional
measures").
86

81 See Appellate Body Report, Japan – Apples, para. 215 (quoting Article 3.7 of the DSU) and Appellate
Body Report, Mexico – Anti-Dumping Measures on Rice, para. 140, citing its earlier determination in Japan –
Apples.
82 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 1.
83 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 34 (citing Panel
Report, Canada – Wheat Exports and Grain Imports, para. 6.10).
84 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 35 (citing Panel
Report, Canada – Wheat Exports and Grain Imports, para. 6.10).
85 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 35 (citing Panel
Report, China – Publications and Audiovisual Products, para. 7.20).
86 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 38.

5.5. In relation to the use of the word "including", Australia argues that Cuba "attempts to include
a non-exhaustive and therefore indeterminate list" of "related measures" within the Panel's terms
of reference. As a result, Cuba has not provided Australia with adequate notice of the measures
being challenged, "or even a complete and specific list" of the "related measures" that it purports
to challenge.
87 Australia draws an analogy with the panel request in China – Raw Materials , in
which the complainants preceded the list of challenged measures with the phrase "among others".
In response to this, the panel concluded that the complainants could not use this phrase to include
an "open-ended" list of measures, as this would "n ot contribute to the 'security and predictability'
of the WTO dispute settlement system".
88 Australia notes that, in that dispute, only those
measures that were explicitly identified by the complainants fell within the panel's terms of
reference.
89 Australia submits that the issue before the panel in China – Raw Materials is
analogous to the one presented in Cuba's panel request. In particular, Cuba attempts to challenge
an "open-ended" list of "related measures" and, apart from the categories of "related measures"
actually listed, Cuba provides no indication of what "other forms" such unspecified measures could
take. Australia therefore argues that it has not b een provided with notice of the measures under
challenge, which creates "considerable uncertainty " as to the identity, number and content of the
measures at issue.90
5.6. Australia further submits that Cuba's panel request fails to identify the specific measures at
i s s u e b e c a u s e C u b a p r o v i d e s n o g u i d a n c e o n w h a t i t m e a n s w h e n i t r e f e r s t o m e a s u r e s t h a t
"complement or add to" the listed instruments. Au stralia argues that this adds further to the
uncertainty regarding the identity, number and content of the laws and regulations under
challenge, and "forces Australia to speculate regarding the measures at issue if it is to begin to
prepare its defence."
91 Australia submits that Cuba's panel request impermissibly shifts to
Australia the burden of attempting to identify the complementary or additional measures at
issue.92
5.7. Australia notes that whether a panel request identifies the specific measures at issue may
depend on the particular context in which those measures operate and may require examining the
extent to which they are capable of being precisely identified. 93 Australia submits that in the
specific context of tobacco regulation, Cuba's attempt to include complementary or additional
measures does not identify the "precise, exact or definite measures at issue" and fails to provide
Australia with adequate notice of these measures.
94
5.8. Australia notes that, "in speculating about the possible complementary or additional
measures that Cuba purports to challenge, it has had cause to consider that, in line with
established international best practice, its tobacco plain packaging measure is part of a
comprehensive range of tobacco control measures" and that this comprehensive approach to
tobacco control is mandated by the World Health Organization Framework Convention on Tobacco
Control (FCTC), which emphasizes that "comprehensive multisectoral measures and responses" to
reduce consumption of all tobacco products are essential to prevent the incidence of diseases,
premature disability and mortality due to toba cco consumption and exposure to tobacco smoke.
95
Australia also observes that the FCTC "mandates" that each party to it "develop, implement,

87 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 39.
88 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 40 (citing Panel
Reports, China – Raw Materials, Annex F-1, para. 12, p. F-6).
89 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 40 (citing Panel
Reports, China – Raw Materials, Annex F-1, para. 13, p. F-6).
90 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 40 (referring to
Panel Report, Canada – Wheat Exports and Grain Imports, para. 6.10).
91 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 42.
92 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 42 (referring to
Panel Report, Canada – Wheat Exports and Grain Imports, para. 6.10).
93 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 43 (citing
Appellate Body Reports, China – Raw Materials, para. 220).
94 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 44.
95 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 45 (citing the
WHO Framework Convention on Tobacco Control (FCTC), done at Geneva, 3 May 2003, 2302 U.N.T.S.166; 42
International Legal Materials 518, Article 4.4).

periodically update and review comprehensive multisectoral national tobacco control strategies,
plans and programmes" in accordance with the FCTC.96
5.9. Australia submits that "the uncertainty re garding the scope of the related measures arises
because of the particular context in which Australia's tobacco plain packaging measure exists and
operates, namely as part of a comprehens ive range of complementary tobacco control
measures".97 It considers that in this context, the references in the panel request of Cuba to a
non-exhaustive list of "related" measures, "inclu ding" those that "complement" or "add to" the
named measures, are not sufficient to identify the specific measures at issue in this dispute.
Rather, Australia submits that the inclusion of "t hese broad and vague terms" in a dispute that
concerns one of Australia's tobacco control measures (that is, tobacco plain packaging in its
context as part of a complementary range of tobacco control measures) does not identify
sufficiently the scope of the measures at issue such that Australia is informed of the case it has to
answer.
98
5.10. Australia notes that if "general tobacco control measures" are "the types of complementary
or additional measures Cuba refers to in its pa nel request (which is not clear and is a matter of
speculation)", Australia's tobacco control measures "span back decades" and have been
implemented at the federal, state and territory, and local municipality level. Australia identifies a
non-exhaustive list of measures
99 it has taken in relation to tobacco control, adding that each of
these measures includes multiple laws and regulations that may have been adopted at the federal,
state or local level, such that Australia's tobacco control measures number in the hundreds.
Australia argues that it cannot be the case that Cuba intends to challenge every current or future
tobacco control measure implemented in Australia and that, in these circumstances, Cuba is
obliged to identify the specific measures at issue so that Australia is informed of the case it has to
answer.
100
5.11. Australia adds that if Cuba's reference to complementary or additional measures is intended
to refer to certain tobacco control measures currently in force in Australia, "there is no reason why
these measures could not be explicitly named, other than to prejudice Australia's defence".
Australia argues that this is in contrast to amending measures which may not come into existence
until after a panel request is submitted and therefore may legitimately be listed by category rather
than by the unknown future name of the amending law or regulation.
101
5.12. Australia concludes that Cuba has not identified the specific measures at issue in a way that
is "precise", "exact" or "definite", contrary to Article 6.2 of the DSU, and has not provided
reasonable notice to Australia as to the case it has to answer. 102 Observing that "where a panel
request fails to identify adequately particular measures or fails to specify a particular claim, then
such measures or claims will not form part of the matter covered by the panel's terms of
reference"103, it requests that the Panel find that its terms of reference are limited to the measures

96 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 46 (citing the
WHO Framework Convention on Tobacco Control (FCTC), done at Geneva, 3 May 2003, 2302 U.N.T.S.166; 42
International Legal Materials 518, Article 5.1).
97 Australia's comments on responses to Australia's requests for preliminary rulings, para. 29.
98 Australia's comments on responses to Australia's requests for preliminary rulings, para. 29.
99 Australia specifically identifies the following: "increasing excise and excise-equivalent customs duty on
tobacco and tobacco-related products; minimum age restrictions on the purchase and sale of tobacco products;
comprehensive bans on tobacco advertising and promotion, including bans on internet advertising of tobacco
products; retail display bans; bans on smoking in offices, bars, restaurants and other indoor public spaces, and
increasingly outdoor places, particularly those where children may be exposed to environmental tobacco
smoke; extensive and continuing public education campaigns on the dangers of smoking; compulsory health
warnings on the packaging of tobacco products; the listing of nicotine replacement therapies and other
smoking cessation supports on Australia's Pharmaceutical Benefits Scheme; "Quitlines" and other smoking
cessation support services; investment in anti-smoking social marketing campaigns; support for Aboriginal and
Torres Strait Islander communities to reduce smoking rates; and stronger penalties for people convicted of
tobacco smuggling offences". Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 47.
100 Australia's request for a preliminary ruling in relation to Cuba's panel request, paras. 47-48.
101 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 49.
102 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 50.
103 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 52 (quoting
Appellate Body Report, Dominican Republic – Import and Sale of Cigarettes, para. 120).

specifically identified in the panel request, and that the remainder of its terms of reference be
limited in the manner described by Australia.
5.13. Australia further notes that "a deficient pane l request will fail to meet the requirements of
Article 6.2 of the DSU regardless of whether the respondent is able to defend itself". 104 It observes
that a responding party has only a limited timeframe in which to respond to the complainant's first
written submission, and that it is therefore critical that a panel request provide a responding party
with sufficient clarity as to the case it has to answer in advance of receiving the complainant's first
written submission, and that "[t]his due process requirement 'is fundamental to ensuring a fair and
orderly conduct of dispute settlement proceedings'".
105 It submits that it cannot begin to gather
evidence, or prepare its defence in a meaningful way, when Cuba has not even identified
sufficiently the measures at issue.
106 A u s t r a l i a s u b m i t s t h a t C u b a ' s f a i l u r e t o m e e t t h e
requirements of Article 6.2 of the DSU has clea rly prejudiced, and continues to prejudice, the
preparation of Australia's defence, violating its fundamental right to due process in these
proceedings.
107
5.14. Australia also notes that defects in a panel request cannot be cured by subsequent
submissions of the parties during the panel proceedings 108, and that compliance with the
requirements of Article 6.2 must be demonstrated on the face of the request for the establishment
of a panel.109 Australia therefore submits that Cuba cannot overcome the deficiencies in its panel
request by clarifying the legal basis of this claim in its first written submission.
5.15. Australia refers to the reliance by Cuba on India – Agricultural Products , and notes that the
panel in that dispute specifically observed that in certain circumstances the reference to "related"
or "implementing" measures may be insufficient for meeting the relevant criteria of Article 6.2 of
the DSU, and its reference in this regard to EC – Selected Customs Matters and China – Raw
Materials.110 Australia argues that Cuba's view is not consistent with the reasoning in those
disputes. This is because neither the Appellate Body in EC – Selected Customs Matters nor the
panel in China – Raw Materials indicated that the lack of specificity was due to how broadly the
primary measures were defined, but instead were based on "the inherent ambiguity created by the
inclusion of the reference to secondary measures".111
5.16. In addition, Australia observes that none of the complainants have offered a clear or
consistent explanation of what is contemplated by "complementary" or "additional" measures, or
how they differ from related, implementing, am ending or replacement measures. Moreover, the
complainants have not indicated why the reference to "related" measures is required, or what
other types of "related" measures may or may not be contemplated by the non-exhaustive list
included in the description of the related measures at issue in their respective panel requests.
Australia adds that it is not challenging the inclusion of terms that would be required to preserve
the due process rights of the complainants (i.e. th at Australia be prevented from manipulating its
measure in the future in such a way as to avoid scrutiny under WTO dispute settlement
procedures).
112
5.17. Australia notes that it understands the assertion by Cuba that it does not intend to
challenge existing tobacco control measures other than the tobacco plain packaging measure itself
as excluding from the scope of its claims the existing tobacco control measures expressly listed in
Australia's preliminary request.
113

104 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 53.
105 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 54 (citing
Appellate Body Report, Thailand – H-Beams, para. 88).
106 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 57.
107 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 59.
108 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 58 (citing
Appellate Body Report, US – Carbon Steel, para. 127).
109 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 58 (citing
Appellate Body Report, US – Carbon Steel, para. 127).
110 Australia's comments on responses to Australia's requests for preliminary rulings, para. 30 (citing
Preliminary Ruling, India – Agricultural Products, para. 3.45).
111 Australia's comments on responses to Australia's requests for preliminary rulings, para. 30.
112 Australia's comments on responses to Australia's requests for preliminary rulings, para. 33.
113 Australia's comments on responses to Australia's requests for preliminary rulings, para. 34.

5.1.2 Cuba
5.18. Cuba responds that Australia's objection to the description of "related measures" in Cuba's
panel request is premature and unfounded, and should not be resolved on an abstract basis at this
early stage of the proceedings, but instead should only be resolved if and when Cuba advances a
claim with respect to a "related measure" in a written submission to the Panel.114
5.19. Cuba argues that its position in this regard is supported by the recent preliminary ruling of
the panel in India – Agricultural Products , which found that, in the circumstances of that case, it
was "premature and indeed unnecessary to make a determination in the abstract, at this
preliminary stage, as to precisely which measures fall within the Panel's terms of reference by
virtue of the inclusion of the terms 'related measures, or implementing measures' in the panel
request. The Panel will revisit this issue in the course of these proceedings should a relevant
challenge arise".
115
5.20. Cuba argues that an additional reason for waiting until Cuba advances claims in respect of
"related measures" is that Australia cannot obtain the relief that it currently seeks from the Panel.
Cuba argues that the Panel's terms of reference were set by the DSB at its meeting on 25 April,
and that they incorporate the description of the measures in Cuba's panel request, such that
Australia cannot obtain an order from the Panel which effectively modifies that description by
striking out language which is contained in that panel request. Cuba argues that, in contrast, it is
open to the Panel at a later stage to refuse to resolve specific claims brought by Cuba on the basis
that those claims relate to measures that have not been adequately described in Cuba's panel
request.
116
5.21. Cuba adds that it has named three specific Australian laws and regulations and has
described their content and only seeks to include a further category of measures which are
"related" to these specifically identified laws an d regulations. "To the extent that there was any
genuine doubt regarding the breadth of the term 'related measures'", Cuba confirms that it will not
seek to challenge any of the 12 specific tobacco control measures that Australia lists in its
preliminary ruling request.
117
5.22. If the Panel is minded to resolve Australia's objection at this stage, Cuba makes three
arguments. First, Cuba submits that Australia's contention that a non-exhaustive, indeterminate,
and open-ended listing of measures is impermissible does not find adequate support in the case
law. Cuba notes that Australia, like many WTO Members, has used such indeterminate, open-
ended and non-exhaustive listings in its prior panel requests. Cuba considers inapposite Australia's
reliance on the panel rulings in Canada – Wheat Exports and Grain Imports and China – Raw
Materials. Cuba distinguishes the former case because the complainant did not name a single
Canadian law or regulation or even specify the precise content of the Canadian laws and
regulations that it was challenging, which led the panel to conclude that it had improperly shifted
the burden of identifying them to Canada.
118 In relation to China – Raw Materials , Cuba argues
that the Panel was "heavily influenced" by the "breadth of the listed primary measures" at issue in
that case. 119 Cuba distinguishes this case on the basis that there is no lengthy list of primary
measures in this case, and that Cuba refers to only three items of Australian law as primary
measures. Cuba argues that the decisions in China – Raw Materials and in EC – Selected Customs

114 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 36.
115 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 37 (quoting Preliminary Ruling, India – Agricultural Products, paras. 3.49-3.50).
116 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 38.
117 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 39.
118 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 41 (citing Panel Report, Canada – Wheat Exports and Grain Imports, para. 6.10).
119 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 41 (referring to Preliminary Ruling, India – Agricultural Products, para. 3.47; and Panel Reports, China –
Raw Materials, paras. 2.3-2.5; and EC – Selected Customs Matters, para. 7.30).

Matters should not be applied in cases that do not involve "very broad" or "lengthy lists of"
measures.120
5.23. Second, Cuba argues that there is no material distinction between a listing of "amending
measures" or "implementing measures" (which Australia appears to accept is legitimate) and a
listing of "complementary or additional measures" (which Australia maintains is illegitimate). Both
involve listings of measures by category, such that the individual measures within the category are
not specified by name. Cuba argues that this has not prevented the Appellate Body from accepting
that descriptions of measures by category can comply with Article 6.2 of the DSU.121
5.24. Third, Cuba submits that it has not includ ed a non-exhaustive listing of measures in its
panel request, but that the measures at issue have to be (1) related measures, (2) amending
measures or (3) replacement measures. The use of the term "including" after the comma in the
phrase "any related measures adopted by Australia, including measures that implement,
complement or add to these laws and regulations, as well as any measures that amend or replace
these laws and regulations" does not imply that that phrase covers measures which fall outside
one or more of the three categories of (1) "related measures", (2) "measures that amend" and
(3) "measures that ... replace".
5.25. Cuba adds that Australia does not explain how the Panel can grant a remedy which would
require it to modify terms of reference that ha ve been set by the DSB. Cuba also notes that
Australia does not attempt to explain why it objects to "complementary or additional measures"
but not "amending measures" or "implementing measures". Cuba also submits that Australia
makes no attempt to justify its assertion that Cuba's panel request includes a listing of non-
exhaustive measures.
122
5.2 Main arguments of the third parties
5.26. Argentina considers that, reading the panel request as a whole and taking into account the
context of the paragraph in question, it is clear from the text of the challenged paragraph that the
complementary or additional measures concerned are directly related to Australia's plain
packaging legislation. Argentina submits that among those related measures are the measures
that are included, be they measures that complement or add to these laws and regulations.
Argentina submits that the text of the request from Cuba refers to the measures that constitute
the plain packaging legislation, and not to any other type of measure with no connecting link other
than a reference to tobacco or health.
123 Argentina considers that the terms at issue "are included
in claims, and that those claims in turn are pr esented collectively and under the same heading:
tobacco plain packaging measures, for which reason Argentina believes that the measures are
presented in a clear and distinct manner and th at the scope of the complaint is, therefore,
precise".
124 Argentina therefore argues that it is unne cessary to make the changes requested by
Australia.125
5.27. The Dominican Republic considers that the Panel should reject Australia's request, for the
same reasons as it gave in response to Australia's similar request in relation to its own
complaint.126
5.28. Guatemala observes that the "co-complainants" consistently refer to the challenged
measures as "plain packaging measures" and that the words "including", "complement" and "add
to" appear to be limited to the reference to plain packaging measures. 127 Guatemala adds that

120 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 41 (referring to Preliminary Ruling, India – Agricultural Products, paras. 3.46-3.48).
121 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 42 (referring to Panel Report, EC – Bananas III, para. 7.27; and Appellate Body Reports, EC – Bananas
III, para. 140; and Chile - Price Band System, paras. 134-144).
122 Cuba's further comments on Australia's request for a preliminary ruling in relation to the Cuba's
panel request, para. 24.
123 Argentina's third-party comments on Australia's requests for preliminary rulings, paras. 9-15.
124 Argentina's third-party comments on Australia's requests for preliminary rulings, para. 22.
125 Argentina's third-party comments on Australia's requests for preliminary rulings, para. 24.
126 The Dominican Republic's third-party comments on Australia's requests for preliminary rulings,
para. 4.
127 Guatemala's third-party comments on Australia's requests for preliminary rulings, para. 2.8.

nothing in the text of the panel request appears to support the view that there "is uncertainty
regarding the identity, number and content of the laws and regulations under challenge."
Guatemala states that "[t]he fundamental problem with Australia's objections seems to be
requesting the Panel to make a determination in the abstract", and that the circumstances in India
– Agricultural Products could be "extrapolated" to the circumstances in the present cases. Finally,
Guatemala states its agreement with Cuba, in that Australia cannot obtain an order from the Panel
which effectively modifies the panel request by st riking out parts of its language, as the panel
request is not subject to amendments, once a panel is established.
128
5.29. Honduras argues that there is no basis in the text of Cuba's panel request for Australia to
c l a i m t h a t i t i s u n c l e a r w h i c h , i f a n y , o f A u s t r a l i a ' s c u r r e n t o r f u t u r e t o b a c c o c o n t r o l m e a s u r e s
Australia is required to defend in addition to the plain packaging measure. Honduras adds that the
additional measures listed in Australia's request would clearly not be "plain packaging measures"
and would not be considered measures that are "related" to three specific legal instruments, all of
which regulate the packaging of tobacco products.
129
5.30. Honduras argues that Australia's objection to the use of the term "including" lacks merit
because the narrative description of the measure, to gether with the identification of three specific
legal instruments and the residual sub-category of "related" measures, identify the measures at
issue as plain packaging measures with sufficient precision. For Honduras, the listing of particular
examples within that residual sub-category of "related" measures (through the use of the term
"including"), logically cannot create an impermissible open-ended list of measures. 130 In addition,
Honduras argues that Australia's objection to the use of the terms "complement" and "add to" also
lacks merit as the terms "complement" or "add to" "textually must refer to those measures that
are related to the plain packaging measures".131
5.31. Honduras adds that residual clauses of th e kind used by Cuba are "an important tool by
which complainants preserve their right to mainta in within a panel's terms of reference future
measures that do not alter the essence of the existing measures".132
5.32. Honduras also believes that Australia's request is premature and that it is therefore not
necessary for the Panel to address Australia's concerns at this point in time. Specifically, there is
no evidence that the complainant may be planning to challenge a measure that does not fall
"within the four corners" of its panel request, and as such Honduras submits that the current
circumstances are the same as those in India – Agricultural Products . It would therefore be more
prudent for the Panel to revisit this issue if the complainants do attempt to include measures
within the Panel's terms of reference that are no t "related", "complement" or "add to" the plain
packaging measures.
133
5.33. Indonesia argues that the panel request of Cuba, when read in context, clearly allows the
Panel to address only plain packaging measures that are not specifically listed in the panel
requests.134 Specifically, the words "including," "complement," and "add to" are clearly limited so
as to refer only to plain packaging measures, and are further qualified by the term "related
measures" and the description of their function as measures that "establish comprehensive
requirement regarding the appearance and form of the retail packaging of tobacco products".
135
Indonesia adds that the attendant circumstances in this case confirm the intended scope of this
dispute. Indonesia refers to its statement, and those of the "co-complainants'", at the DSB, the
Council for TRIPS, and the TBT Committee, in whic h they focused on Australia's plain packaging
requirements and no other facet of Australia's tobacco control regime.136
5.34. Indonesia submits that the challenged language does not prejudice Australia's interests, and
that Australia's objection would be more appropriately raised in response to the identification by
the parties of a specific measure it believes would fall within the scope of the challenged

128 Guatemala's third-party comments on Australia's requests for preliminary rulings, paras. 2.1-2.13.
129 Honduras' third-party comments on Australia's requests for preliminary rulings, paras. 5-13.
130 Honduras' third-party comments on Australia's requests for preliminary rulings, paras. 14-17.
131 Honduras' third-party comments on Australia's requests for preliminary rulings, para. 19.
132 Honduras' third-party comments on Australia's requests for preliminary rulings, paras. 20-21.
133 Honduras' third-party comments on Australia's requests for preliminary rulings, paras. 22-24.
134 Indonesia's third-party comments on Australia's requests for preliminary rulings, para. 7.
135 Indonesia's third-party comments on Australia's requests for preliminary rulings, para. 10.
136 Indonesia's third-party comments on Australia's requests for preliminary rulings, paras. 11-14.

language.137 Indonesia likens this case to the circumstances in India – Agricultural Products , such
that until written briefing in this case has co mmenced, it is "premature and indeed unnecessary"
for the Panel to opine on Australia's request.138
5.35. Indonesia also argues that this language is necessary to protect the parties' rights should
Australia adopt measures closely connected to the plain packaging measures listed in the panel
requests or change the legal nature of the existing plain packaging measures (e.g., by withdrawing
and reissuing measures in a slightly different form) during the course of the Panel proceeding.
Indonesia states that because measures that come into existence during the course of the Panel's
proceeding may be challenged only if the panel request is sufficiently broad to allow for it,
"Indonesia's procedural rights could be impaired if the challenged language is struck from its panel
request".
139
5.36. In Mexico's view, Australia's objection concerning the words "including measures",
"complement" and "add to" may be resolved at a later stage in the proceedings. Mexico believes
that the same approach could be taken in the present case as was taken by the Panel in India –
Agricultural Products , which determined that it was premature and unnecessary to make a
determination in the abstract at a preliminary stage as to which measures fall within the Panel's
terms of reference. Mexico adds that the Panel could rule as the case progresses and on the basis
of the terms of reference which specific measures are included in the terms of reference.
140
5.3 Analysis by the Panel
5.37. As described above, the question before us is whether Cuba's panel request is consistent
with the requirement under Article 6.2 of the DSU to identify the specific measure at issue. In
particular, Australia challenges the use of the words "including", and "complement or add to" in
Cuba's panel request:
Any related measures adopted by Australia, including measures that implement,
complement or add to these laws and regulations, as well as any measures that
amend or replace these laws and regulations. (emphasis added)
5.38. Australia submits that "the use of the term 'including', which defines the 'related measures'
in a non-exhaustive way", and "the attempt to in clude unspecified measures that 'complement or
add to' those explicitly named in the panel reques t" indicate that Cuba's panel request does not
specify the measures at issue. 141 Cuba, for its part, submits that Australia's objection should not
be resolved on an abstract basis at this early stage of the proceedings. 142 Cuba also argues that
Australia's contention is not supported by case law143, that there is no material distinction between
"amending measures" or "implementing measures" 144, and "complementary or additional
measures", and that Cuba's description of the measures is "exhaustive".145
5.39. We first consider the requirements of Arti cle 6.2 in respect of the identification of the
measures at issue, before turning to an examination of Cuba's panel request in light of these
requirements.
5.3.1 The requirement to "identify the specific measures at issue"
5.40. Article 6.2 of the DSU provides as follows:

137 Indonesia's third-party comments on Australia's requests for preliminary rulings, para. 15.
138 Indonesia's third-party comments on Australia's requests for preliminary rulings, paras. 15-19.
139 Indonesia's third-party comments on Australia's requests for preliminary rulings, paras. 20-23.
140 Mexico's third-party comments on Australia's requests for preliminary rulings, paras. 27-28.
141 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 38.
142 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 36.
143 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 41.
144 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 42.
145 Cuba's response to Australia's request for a preliminary ruling in relation to Cuba's panel request,
para. 43.

The request for the establishment of a panel shall be made in writing. It shall indicate
whether consultations were held, identify the specific measures at issue and provide a
brief summary of the legal basis of the complaint sufficient to present the problem
clearly.
5.41. As described by the Appellate Body, Articl e 6.2 contains two distinct requirements, namely
(1) the identification of the specific measures at issue and (2) the provision of a brief summary of
the legal basis of the complaint (or the claims).
146 Together, these two elements comprise the
"matter referred to the DSB", which forms the basis for a panel's terms of reference under
Article 7.1 of the DSU.147
5.42. Article 6.2 serves the function of establishing and delimiting the panel's jurisdiction. 148 It
serves a "pivotal function" in WTO dispute settlement 149 in that, to the extent that a panel request
fails to identify "the specific measures at issue" and/or "to provide a brief summary of the legal
basis of the complaint", such measures and/or claims do not fall within a panel's terms of
reference and that panel would not have jurisdiction to make findings in respect of them.
150
5.43. In addition, by establishing and defining the jurisdiction of the panel, the panel request
fulfils the due process objective of providing the respondent and third parties notice regarding the
nature of the complainant's case151, to enable them to respond accordingly.152
5.44. The Appellate Body recently summarized the manner in which a panel must determine
whether a panel request fulfils the requirements of Article 6.2. Specifically, the Appellate Body
stated that:
[A] panel must determine compliance with Article 6.2 "'on the face' of the panel
request"153 as it existed at the time of filing. Thus, parties' submissions and
statements during the panel proceedings cannot "cure" any defects in the panel
request.
154 Nevertheless, these subsequent submissions and statements may be
consulted to the extent that they may confirm or clarify the meaning of the words
used in the panel request. 155 In any event, the determination of the conformity with
Article 6.2 should be done on a case-by-case basis, considering the particular context
in which the measures exist and operate. 156 This determination must be done on an
objective basis, such that any circumstances taken into account may not contemplate
those that are relevant only to a party to the panel proceedings.
157

146 Appellate Body Reports, China – Raw Materials, para. 219; and EC and certain member States –
Large Civil Aircraft, para. 639.
147 Appellate Body Report, US – Countervailing and Anti-Dumping Measures (China), para. 4.6 (citing
Appellate Body Report, EC and certain member States – Large Civil Aircraft, para. 639 (referring to Appellate
Body Reports, Guatemala – Cement I, paras. 72 - 73; US – Carbon Steel, para. 125; US – Continued Zeroing,
148 Appellate Body Report, US – Countervailing and Anti-Dumping Measures (China), para. 4.6 (citing
Appellate Body Reports, Brazil – Desiccated Coconut, p. 22, DSR 1997:I, p. 186; US – Continued Zeroing,
para. 161; and EC and certain member States – Large Civil Aircraft, para. 640).
149 Appellate Body Reports, China – Raw Materials, para. 219.
150 See, for example, Appellate Body Report, US – Continued Zeroing, para. 161 ("[A]s a panel's terms
of reference are established by the claims raised in panel requests, the conditions of Article 6.2 serve to define
the jurisdiction of a panel").
151 Appellate Body Report, US – Countervailing and Anti-Dumping Measures (China), para. 4.7 (citing
Appellate Body Reports, Brazil – Desiccated Coconut, p. 22, DSR 1997:I, p. 186; US – Carbon Steel,
para. 126; and EC and certain member States – Large Civil Aircraft, para. 640).
152 Appellate Body Report, US – Countervailing and Anti-Dumping Measures (China), para. 4.7 (citing
Appellate Body Reports, Brazil – Desiccated Coconut, p. 22, DSR 1997:I, p. 186; Chile – Price Band System,
153 (footnote original) Appellate Body Report, US – Continued Zeroing, para. 161 (quoting Appellate
Body Report, US – Carbon Steel, para. 127).
154 (footnote original) Appellate Body Report, EC and certain member States – Large Civil Aircraft,
para. 787 (referring to Appellate Body Reports, EC – Bananas III, para. 143; and US – Carbon Steel,
para. 127).
155 (footnote original) See e.g. Appellate Body Report, US – Carbon Steel, para. 127.
156 (footnote original) Appellate Body Report, EC and certain member States – Large Civil Aircraft,
para. 641.
157 Appellate Body Report, US – Countervailing and Anti-Dumping Measures (China), para. 4.9.

5.45. The requirement to identify the specific me asures at issue serves to define the "object of
the challenge", or, more precisely, "the measure that is alleged to be causing the violation of an
obligation contained in a covered agreement".
158 The Appellate Body has observed that "the clear
identification of the specific measures at the outset is central to define the scope of the dispute to
be addressed by a panel".159 It also serves to ensure that the respondent is in a position to defend
itself:
The word "specific" in Article 6.2 establishes a specificity requirement regarding the
identification of the measures that serves the due process objective of notifying the
parties and the third parties of the measure(s) that constitute the object of the
complaint.
160
5.46. Whether or not a panel request satisfies this requirement must be assessed "on the merits
of each case, having considered the panel requ est as a whole, and in the light of attendant
circumstances".161 The Panel must therefore "scrutinize carefully the panel request, read as a
whole, and on the basis of the language used". 162 In addition, "whether a panel request identifies
the 'specific measures at issue' may depend on the particular context in which those measures
operate and may require examining the extent to which they are capable of being precisely
identified".163
5.47. In light of the nature of Australia's request, we will consider how this requirement applies in
relation to panel requests that define the measures at issue in part without naming them (that is,
in a manner other than by specifically enumeratin g the measures at issue, such as, for example,
by referring to "related" measures, "implementing" measures, or "amending" measures). We note
that such references are not uncommon in panel re quests, and have been challenged in previous
disputes.
5.48. For example, the panel request in EC – Bananas III referred to EC Regulation 404/93 and
"subsequent EC legislation, regulations and administrative measures, including those reflecting the
provisions of the Framework Agreement on bananas, which implement, supplement and amend
that regime".
164 The panel considered that the "banana regime" challenged by the complainants
was "adequately identified", even if the "subsequen t EC legislation, regulations and administrative
measures that further refine and implement the basic regulation" were not identified. The
Appellate Body agreed that the request contained "sufficient identification of the specific measures
at issue to satisfy the requirements of Article 6.2 of the DSU".
165 We understand this to indicate
that general references to unnamed measures, such as, in that case, measures that "implement,
supplement and amend" a primary measure explicitly identified in the panel request, may be
capable of satisfying the specificity requirement in Article 6.2 of the DSU.
5.49. We also note that in some cases, by co ntrast, similar general references have been found
insufficient to meet the specificity requirement in Article 6.2. Thus, in EC – Selected Customs
Matters, the Appellate Body found that the phrase "implementing measures and other related
measures" was "vague and does not allow the identification of the specific instruments that the
reference aims to cover", such that it did not "identify the specific measures at issue", as required
by Article 6.2 of the DSU.
166 In China – Raw Materials , the panel similarly held that the term

158 Appellate Body Report, US – Countervailing and Anti-Dumping Measures (China), para. 4.12; (citing
Appellate Body Report, EC – Selected Customs Matters, para. 130).
159 Appellate Body Report, EC – Chicken Cuts, para. 155.
160 Appellate Body Report, EC – Selected Customs Matters, para. 152.
161 Appellate Body Report, US – Carbon Steel, para. 127. See also Appellate Body Report, Korea – Dairy,
paras. 124-127; Panel Report, Canada – Wheat Exports and Grain Imports, para. 6.10, sub-para. 14.
162 Appellate Body Report, EC – Fasteners (China), para. 562 (citing Appellate Body Reports, US –
Carbon Steel, para. 127; US – Oil Country Tubular Goods, paras. 164 and 169; US – Continued Zeroing,
163 Appellate Body Reports, China – Raw Materials, para. 220 (citing Appellate Body Report, EC and
certain member States – Large Civil Aircraft, para. 641).
164 WT/DS27/6 (emphasis added).
165 Panel Reports, EC – Bananas III, para. 7.27; Appellate Body Report, EC – Bananas III, para. 140.
166 In that dispute, the United States had challenged the EC's Community Customs Code, the regulation
implementing the Customs Code, the regulation on the tariff and statistical nomenclature and on the Common
Customs Tariff, and the Integrated Tariff of the European Communities, as well as "implementing measures
and other related measures". Appellate Body Report, EC – Selected Customs Matters, paras. 2 and 152,
footnote 369.

"related measures" was too broad and did not allow China to know clearly what specific measures
were being challenged. 167 A s o b s e r v e d b y t h e p a n e l i n India – Agricultural Products, the broad
scope of the enumerated measures in these two disputes appears to have contributed to the
conclusion that the terms at issue were insufficient ly precise, in the context of those disputes, to
meet the specificity requirement of Article 6.2 of the DSU.168
5.50. Overall, these rulings suggest to us that a reference to unnamed measures such as those
discussed above is not per se inconsistent with the specificity requirement in Article 6.2. In
particular, as noted by Australia, such an approach may allow the complainant to preserve its due
process rights 169 and thereby assist in ensuring that a positive solution to the dispute can be
secured.170 Such language may in particular serve to protect the interests of the complainant in
respect of relevant measures not yet in existe nce at the time of filing the panel request. 171
However, whether such a reference meets the specificity requirements of Article 6.2 will depend
importantly on the circumstances of the case. Just as with any assessment under this element of
Article 6.2, a finding of whether such language is consistent with the specificity requirement under
this provision must be based, as described above, on a consideration of the panel request as a
whole and of any attendant circumstances, on a case-by-case basis.172
5.51. In this respect, we note the following observations of the panel in Japan – Film:
To fall within the terms of Article 6.2, it seems clear that a 'measure' not explicitly
described in a panel request must have a clear relationship to a 'measure' that is
specifically described therein, so that it ca n be said to be 'included' in the specified
measure. In our view, the requirements of Article 6.2 would be met in the case of a
'measure' that is subsidiary or so closely related to a "measure" specifically identified,
that the responding party can reasonably be found to have received adequate notice
of the scope of the claims asserted by the complaining party.
173
5.52. That panel also stressed that the two elem ents – close relationship and notice – are inter-
related, so that "only if a 'measure' not explicitly identified is subsidiary or closely related to an
identified 'measure' will notice be adequate".
174
5.53. Like that panel, we are mindful of the role of the panel request in fulfilling due process
objectives, for both parties. Due process is a fundamental principle of WTO dispute settlement, 175

167 Panel Reports, China – Raw Materials, Annex F-1, para. 17.
168 Preliminary Ruling, India – Agricultural Products, paras. 3.45-3.47.
169 Australia's comments on responses to Australia's requests for preliminary rulings, para. 28.
170 In this regard we note the determination of the panel in EC – Chicken Cuts that two subsequent
measures cited by the complainants in the course of the proceedings did not fall within its terms of reference,
based on its determination that Brazil's and Thailand's respective panel requests were "much more narrowly
drafted" than the "broadly worded" panel requests at issue in previous cases where panels had found measures
not identified specifically in the panel requests to be nevertheless within their terms of reference. (See Panel
Reports, EC – Chicken Cuts (Brazil), paras. 7.20-7.32 and EC – Chicken Cuts (Thailand), paras. 7.20-7.32).
On appeal, the Appellate Body was not persuaded that the subsequent measures in question could be
considered as amendments to the two original measures as argued or that the two sets of measures were, in
essence, the same. It also noted that the objective of securing a positive and effective resolution of a dispute
"cannot be pursued at the expense of complying with the specific requirements and obligations of Article 6.2"
(Appellate Body Report, EC – Chicken Cuts, paras. 157-158 and 161).
171 See for example Appellate Body Report, Chile – Price Band System, paras. 137 and 138.
172 Appellate Body Report, US – Carbon Steel, para. 127. See also Appellate Body Report, Korea – Dairy,
paras. 124-127; Panel Report, Canada – Wheat Exports and Grain Imports, para. 6.10, sub-para. 14.
173 Panel Report, Japan – Film, para. 10.8. We note that this test has been referred to by subsequent
panels in assessing whether certain measures not expressly identified in the panel request nonetheless fell
within the scope of their terms of reference. For instance, the panel in US – Carbon Steel referred to the Japan
– Film panel and concluded that a measure not identified in the panel request was not a measure that was
subsidiary, or so closely related to, any of the measures specifically identified that the responding party could
reasonably be found to have received adequate notice of the scope of the claims asserted by the complaining
party (see Panel Report, US – Carbon Steel, para. 8.11). The panel in Australia – Salmon (Article 21.5 –
Canada) also considered whether measures not expressly named in the panel request were "so closely related"
to the measures named in the panel request that the respondent "can reasonably be found to have received
adequate notice" of the scope of the complainant's claims (see Panel Report, Australia – Salmon (Article 21.5 –
Canada), para. 7.10, subpara. 27).

which informs various provisions of the DSU. 176 As we understand it, the requirements of due
process imply, in this context, both that the complainant is able to define the scope of its
complaint so as to secure a positive solution to the dispute 177 and that the panel request identifies
the measure(s) at issue with such specificity that all parties and third parties receive adequate
notice regarding the nature of the complainant's case.178
5.54. We further note that these requirements of due process continue to manifest themselves in
the course of panel proceedings. We note, in this respect, the observations of the Appellate Body
in Chile – Price Band System:
[G]enerally speaking, the demands of due process are such that a complaining party
should not have to adjust its pleadings throughout dispute settlement proceedings in
order to deal with a disputed measure as a "moving target". If the terms of reference
in a dispute are broad enough to include amendments to a measure … and if it is
necessary to consider an amendment in order to secure a positive solution to the
dispute … then it is appropriate to consider the measure as amended in coming to a
decision in a dispute.
179 (emphasis added)
5.55. In determining whether a specific amen dment identified in the course of the panel
proceedings could be considered to be properly before the panel in that case, the Appellate Body
considered not only the terms of the panel request, which included a general reference inter alia to
"complementary provisions and/or amendments", but also the fact that the amendment in
question did not change the "essence" of the original measure at issue. 180 We note that the panel
in China – Raw Materials considered that the same approach applied in respect of "replacement
measures".181
5.56. Thus, even where the language of a panel request is, on its face, broad enough to
encompass certain additional instruments not identified by name in the request, this would not
provide a basis for the complainant to expand th e scope of the dispute or modify its essence
through the invocation of such instruments in the course of the panel proceedings. This is
consistent, in our view, with the fact that it is the panel request that determines the scope of the

175 The Appellate Body has held that "the protection of due process is an essential feature of a rules-
based system of adjudication, such as that established under the DSU", and that "due process is fundamental
to ensuring a fair and orderly conduct of dispute settlement proceedings". (Appellate Body Reports, Canada –
Continued Suspension / US – Continued Suspension, para. 433; and Thailand – H-Beams, para. 88,
respectively. See also Appellate Body Report, Chile – Price Band System, para. 176).
176 See Appellate Body Report, Mexico – Corn Syrup (Article 21.5 – US), para. 107. See also Appellate
Body Reports, India – Patents (US), para. 94; and Chile – Price Band System, para. 176.
177 As the Appellate Body has said, "due process may … require a panel to take appropriate account of
the need to safeguard … an aggrieved party's right to have recourse to an adjudicative process in which it can
seek redress in a timely manner, and the need for proceedings to be brought to a close" (Appellate Body
178 Appellate Body Report, US – Countervailing and Anti-Dumping Measures (China), para. 4.7 (citing
Appellate Body Reports, Brazil – Desiccated Coconut, p. 22, DSR 1997:I, p. 186; US – Carbon Steel, para.
126; EC and certain member States – Large Civil Aircraft, para. 640).
179 Appellate Body Report, Chile – Price Band System, para. 144.
180 See Appellate Body Report, Chile – Price Band System, paras. 139-144. In that case, the
panel request identified a primary law and existing amendments, "as well as the regulations and
complementary provisions and/or amendments". In the course of the proceedings, an amendment was
discussed, that added a paragraph to the primary law, and set out the maximum ad valorem tariff that could
be applied (which was in any case evident from Chile's tariff bindings). The Appellate Body considered that the
measure was not, in essence, different as a result of the amendment (see Appellate Body Report, Chile – Price
Band System, paras. 137-139).
181 The panel in China – Raw Materials considered that this approach should also apply to "replacement
measures that are of the same essence as original measures specifically identified in the [p]anel [r]equest",
because the Appellate Body's "rationale for including amendments of the same essence applies equally to
replacement measures so that replacement measures of the same essence should also be assessed by a panel
in order to secure a positive solution to a dispute". Panel Reports, China – Raw Materials, para. 7.16. Similarly,
the panel in China – Publications and Audiovisual Products analysed whether China could be considered to have
received adequate notice of a particular measure, based on the language of the panel request as a whole,
notwithstanding the fact that it included a general reference to "amendments, related measures, or
implementing measures" (Panel Report, China – Publications and Audiovisual Products, para. 7.60, footnote
105).

dispute before the Panel and with the due process objectives served by the panel request in this
respect.
5.57. Bearing in mind these elements, we now turn to Cuba's panel request to determine whether
it sufficiently identifies the "specific measures at issue" consistently with Article 6.2 of the DSU.
5.4 Whether Cuba's panel request identifies the specific measures at issue
5.58. As described above, Australia challenges some of the terms used by Cuba in its panel
request to identify the measures at issue in its complaint.
5.59. In order to determine whether these terms meet the requirements of Article 6.2, we must
"scrutinize carefully the panel request, read as a whole, and on the basis of the language used". 182
We therefore start our analysis with a consideration of the terms of Cuba's panel request.
5.60. Section A of Cuba's panel request is entitled "Measures at issue". That section provides as
follows:
The measures at issue (collectively the "Plain Packaging Measures") are the following:
 The Tobacco Plain Packaging Act 2011, Act No. 148 of 2011, "An Act to
discourage the use of tobacco products, and for related purposes";
 The Tobacco Plain Packaging Regulations 2011 (Select Legislative Instrument
2011, No. 263), as amended by the To bacco Plain Packaging Amendment
Regulation 2012 (No.1) (Select Legislative Instrument 2012, No. 29) ("the
Regulations");
 The Trade Marks Amendment (Tobacco Plain Packaging) Act 2011, Act No. 149
of 2011, "An Act to amend the Trade Marks Act 1995, and for related
purposes"; and
 Any related measures adopted by Australia, including measures that implement,
complement or add to these laws and regulations, as well as any measures
that amend or replace these laws and regulations.183
5.61. The panel request then states "[t]he Plain Packaging Measures regulate the appearance and
form of retail packaging used in connection with sales of cigars, cigarettes and other tobacco
products. They also regulate the appearance and form of the tobacco products themselves".184 The
panel request then proceeds to elaborate on the manner in which the cited measures regulate the
enumerated products.
185
5.62. Australia's challenge focuses on the four th "dot point" of Cuba's enumeration of the
measures at issue. Specifically, Australia challenges the use of the terms "including", and
"complement or add to" in that context, on the basis that they are "indeterminate" 186 and may
potentially cover a broad range of measures relating to tobacco control, such as public education
campaigns or the listing of nicotine replacement therapies. Australia submits that "the uncertainty
regarding the scope of the related measures arises because of the particular context in which
Australia's tobacco plain packaging measure exists and operates, namely as part of a
comprehensive range of complementary tobacco control measures".
187
5.63. We first observe that each of the terms challenged by Australia is used to describe instances
of "related" measures. The term "related measures" itself is to be read against the context of the
enumeration that precedes it in the first three "dot points" under which the measures at issue are

182 Appellate Body Report, EC – Fasteners (China), para. 562.
183 Cuba's request for the establishment of a panel, p. 1.
184 Cuba's request for the establishment of a panel, p. 1.
185 Cuba's request for the establishment of a panel, p. 2.
186 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 57.
187 Australia's comments on responses to Australia's requests for preliminary rulings, para. 29.

listed. In order to properly understand the terms at issue as part of the panel request "as a
whole", we must therefore consider them as they are used in this particular context.
5.64. As described above, Cuba's panel request identifies the measures at issue collectively as
"the 'Plain Packaging Measures'". It then elaborates on this category of measures in three separate
ways. First, it enumerates three specific acts and regulations (namely, the Tobacco Plain Packaging
Act 2011, the Tobacco Plain Packaging Regula tions 2011, and the Trade Marks Amendment
(Tobacco Plain Packaging) Act 2011). These may be described as the "primary" measures
identified in this dispute. Second, immediately following this enumeration, it provides that the Plain
Packaging Measures are also "any related measures (…) including measures that implement,
complement or add to these laws and regulation s and any measures that amend or replace these
laws and regulations". Finally, the panel request provides a narrative that further defines "the Plain
Packaging Measures" as measures that "regulate the appearance and form of retail packaging used
in connection with sales of cigars, cigarettes and other tobacco products" and that "also regulate
the appearance and form of the tobacco products themselves".
5.65. A plain reading of this language on its face suggests that the term "related" measures, as
used here, necessarily refers to the three primary measures enumerated above, i.e. the three
listed measures specifically addressing "tobacco plain packaging". Only measures related to these
three specifically listed instruments could theref ore fall within the scope of the term "related"
measures. The final narrative element of the defi nition of "Plain Packaging Measures" further
clarifies that the measures at issue are defined only as measures that regulate "the appearance
and form of retail packaging used in connection with sales of cigars, cigarettes and other tobacco
products" or "the appearance and form of the tobacco products themselves". We consider that this
narrative element further clarifies and delimits the scope of measures within the Panel's terms of
reference, insofar as measures falling within the scope of the three primary measures, or of
"related measures, including measures … that … complement or add to" the primary measures,
would also need to regulate the appearance and form of "retail packaging used in connection with
sales of cigars, cigarettes and other tobacco products" or of "the tobacco products themselves" in
order to fall within our terms of reference.
5.66. In view of these limitations on the scope of measures covered, we do not consider that the
language of the panel request in relation to "related measures", and in particular with respect to
related measures that "add to" or "complement" the primary listed measures, is as open as
Australia has suggested. Australia has argued that Cuba, through the language of its
panel request, "attempts to include a non-exhaustive and therefore indeterminate list" of "related
measures" within the Panel's terms of reference.
188 Specifically, Australia has identified a range of
" t o b a c c o c o nt r o l" m e a s u r e s t h a t it a r g u e s c o u ld fa l l w it h in t h e s c o p e o f th e la n g u a g e o f Cu b a ' s
panel request, including (for example) public education campaigns, the listing of nicotine
replacement therapies and other smoking cessation supports on Australia's Pharmaceutical
Benefits Scheme, or Quitlines and other smoking cessation support services.
189 In the light of our
understanding of the terms of the panel request, and the parameters created by the language
therein, it is not apparent to us how such measures could fall within the scope of the panel request
and thus within our terms of reference. Specifically, we are not persuaded that such indeterminacy
exists when the terms "including" and "complement or add to" are read in the context of the
remainder of the panel request. We are therefore of the view that the terms "including" and
"complement or add to" do not unduly broaden the scope of the dispute in the manner that
Australia argues.
5.67. Recalling our discussion in Section 5.3.1 above, we further observe that the language used
by Cuba is similar to that used by the complainants in EC – Bananas III . We recall that the
panel request in that case referred to a specific EC Regulation and "subsequent EC legislation,
regulations and administrative measures, including those reflecting the provisions of the
Framework Agreement on bananas, which implement, supplement and amend that regime".
190
Notwithstanding such similarities, we are mindful of the requirement that we must "scrutinize
carefully the panel request, read as a whole, and on the basis of the language used". 191 With this
in mind, we note the broader context in which these words appeared in the complainants' panel

188 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 39.
189 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 47.
190 WT/DS27/6. (emphasis added)
191 Appellate Body Report, EC – Fasteners (China), para. 562.

request in EC – Bananas III . In particular, we observe that the panel request in that dispute
explicitly identified an impugned measure and then identified, by way of a narrative description,
related unnamed measures (that is, "subsequent EC legislation, regulations and administrative
measures, including those reflecting the provisions of the Framework Agreement on bananas,
which implement, supplement and amend that regime").
192
5.68. As discussed, Cuba has defined the measures at issue as the "Plain Packaging Measures",
which it defines with explicit reference to three measures (the Tobacco Plain Packaging Act 2011,
the Tobacco Plain Packaging Regulations 2011, and the Trade Marks Amendment (Tobacco Plain
Packaging) Act 2011). Moreover, Cuba has further identified the measures at issue by reference to
their application and effect ("[t]he Plain Packagin g Measures regulate the appearance and form of
retail packaging used in connection with sales of cigars, cigarettes and other tobacco products"
and "also regulate the appearance and form of the tobacco products themselves").
193 We consider
that this approach is also similar to that taken by the complainants in EC – Bananas III . In
particular, we consider that the scope of the primary measures is well delineated, such that the
qualifying role played by the terms "complement" and "add to" is similar to that of the term
"supplement" in the context of EC – Bananas III . Bearing this similarity in mind, as well as the
similarity between the words "implement, suppl ement and amend" and "complement or add to"
themselves, we do not consider that there is any material difference between the language used
by Cuba in its panel request, and that en dorsed by the panel and Appellate Body in EC –
Bananas III.194 This confirms us in our view that this language is sufficiently specific to satisfy
Article 6.2 of the DSU.
5.69. We note Australia's argument that the circumstances in this dispute are analogous to those
in China – Raw Materials , in which the complainants referred in their panel requests to a series of
measures, preceded by the phrase "among others". 195 In its preliminary ruling, the panel in that
case found that the complainants could not include additional measures other than those
enumerated in the panel requests, because "[s]uch an 'open ended' list would not contribute to the
'security and predictability' of the WTO dispute sett lement system as required by Article 3.2 of the
DSU".196 Australia submits that the language used by Cuba is similarly open-ended and "does not
provide Australia with notice of the measures under challenge and creates considerable uncertainty
as to the identity, number and content of the measures at issue".
197
5.70. As discussed above, the language in Cuba's panel request establishes parameters that
circumscribe the measures at issue through reference to (i) the narrative description of "Plain
Packaging Measures", (ii) the three primary measures, and (iii) the reference to measures "related
to" such measures, which includes measures that "complement" and "add to" those measures,
which do not change the essence of the dispute, and of which Australia has notice. In contrast, the
panel request in China – Raw Materials did not contain such parameters. We are not persuaded
that Cuba's panel request, and the parameters ther ein, give rise to a similarly "open-ended" list.
In particular, as discussed above, we do not consider that these terms, read in context, imply that
the broad range of "general tobacco control me asures" not directly related to tobacco plain
packaging that are the basis for Australia's concern would be covered.
5.71. In light of the above, we consider that the terms "including", "complement" and "add to", as
used in Cuba's panel request, are not, on their face, inconsistent with the requirement under
Article 6.2 of the DSU to identify the specific measures at issue.
5.72. In making this determination, we make no assessment, at this stage of our proceedings, as
t o w h e t h e r a n y p a r t i c u l a r m e a s u r e t h a t m a y b e i n v o k e d b y C u b a i n t h e c o u r s e o f t h e s e
proceedings as "related" to the plain packaging measures as described above, including measures
that may "add to or complement" the listed measures, is or is not within our terms of reference.

192 WT/DS27/6.
193 WT/DS458/14.
194 Panel Report, EC – Bananas III, para. 7.27; Appellate Body Report, EC – Bananas III, para. 140. We
also note the comparable language in Chile – Price Band System to "complementary provisions and/or
amendments" (See Appellate Body Report, Chile – Price Band System, para. 135).
195 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 40.
196 Panel Reports, China – Raw Materials, Annex F-1, para. 12.
197 Australia's request for a preliminary ruling in relation to Cuba's panel request, para. 40.

5.73. We are mindful in this regard that "a clear identification of the specific measures at the
outset is central to define the scope of the dispute to be addressed by a panel" 198 and recall the
important due process role played by the panel request, as discussed in paragraphs 5.53. to
5.56. above. We note the observation of the panel in EC – IT Products that it did not consider
"that the mere incantation of the phrase 'any amendments, or extensions and any related or
implementing measures' in a panel request will permit Members to bring in measures that were
clearly not contemplated in the panel request".
199 Similarly, in the present proceedings, the use of
such terms would not provide a legitimate basis for the complainant to seek to expand or
otherwise modify the scope of the dispute in the co urse of the proceedings. In addition, we would
expect any invocation in the course of the procee dings of a measure not identified by name in the
panel request to take place in a timely manner.
5.74. Finally, we take note of Cuba's confirmation that it will not seek to challenge any of the 12
specific tobacco control measures that Australia lists in its request "at any stage of these
proceedings".
200
5.75. This preliminary ruling will become an integral part of the Panel's report, subject to any
modifications or elaboration of the reasoning, either in a subsequent ruling or in the Panel's report,
in the light of comments received from the parties in the course of the proceedings.