AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS AND OTHER PLAIN PACKAGING REQUIREMENTS APPLICABLE TO TOBACCO PRODUCTS AND PACKAGING
Document: Request for Consultations by Ukraine
Date: 15 March 2012
Document codes: WT/DS434/1; G/TBT/D/39; G/L/985; IP/D/30
Complainant: Ukraine
Respondent: Australia
Third parties: Argentina, Brazil, Canada, Dominican, Ecuador, EU, Guatemala, Honduras, India, Indonesia, Japan, South Korea, New Zealand, Nicaragua, Norway, Oman, Philippines, Singapore, Taiwan, Turkey, U.S., Uruguay, Zambia, Zimbabwe, Chile, China, Cuba, Egypt, Malaysia, Mexico, Moldova, Nigeria, Peru, Thailand, Malawi
Dispute stage: Mutually Agreed Solution
Agreements cited: Art. 15.1, 15.4, 1.1, 16.1, 16.3, 20, 2.1, 3.1  Intellectual Property (TRIPS)Art. 2.1  Technical Barriers to Trade (TBT)Art. I, III:4  GATT 1994

AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS AND OTHER
PLAIN PACKAGING REQUIREMENTS APPLICABLE TO TOBACCO PRODUCTS AND
PACKAGING

Request for Consultations by Ukraine

 The following communication, dated 13 March 2012, from the delegation of Ukraine to the
delegation of Australia and to the Chairperson of the Dispute Settlement Body, is circulated in
accordance with Article 4.4 of the DSU.

 My authorities have instructed me to request consultations with the Government of Australia
pursuant to Article 4 of the Understanding on Rules and Procedures Governing the Settlement of
Disputes, Article 64.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the
"TRIPS Agreement"), Article 14.1 of the Agreement on Technical Barriers to Trade (the "TBT
Agreement"), and Article XXII of the General Agreement on Tariffs and Trade 1994 (the
"GATT 1994") concerning certain Australian laws a nd regulations that impose trademark restrictions
and other plain packaging requirements on tobacco products and packaging (the "measures").

 Australia's measures impose significant trademar k restrictions and other so-called "plain
packaging" requirements regarding the appear ance and packaging of tobacco products. The
challenged measures are contained in:

 The Tobacco Plain Packaging Act 2011 (the "Plain Packaging Act") and its implementing
Tobacco Plain Packaging Regulations 2011 (the "Regulations");
 The Trade Marks Amendment (Tobacco Plain Packaging) Act 2011; and
 Any further implementing regulations and rela ted acts, polices, or practices adopted by
Australia that guide, amend, supplement, re place, and/or implement the above mentioned
measures.
 The measures are applicable to all tobacco products grown or manufactured for human
consumption.
1 They impose criminal penalties for virtually any action, including manufacture, supply,
or packaging of tobacco products, that is not in compliance with the "tobacco product requirements"
of the Plain Packaging Act a nd its implementing Regulations.2 The Plain Packaging Act provides that
"[n]o trade mark may appear anywhere on a t obacco product" other than as permitted by the

1 Plain Packaging Act, Section 4.
2 Plain Packaging Act, Chapter 3.
WT/DS434/1, IP/D/30,
G/TBT/D/39, G/L/985

Regulations.3 The Plain Packaging Act further provides, inter alia, that "[n]o trade mark may appear
anywhere on the retail packaging of tobacco products," 4 other than the brand name, variant, business
or company name and other relevant legislative requirements. 5 The appearance of the brand name is
regulated by the Plain Packaging Act and the implementing Regulations.6

 The Plain Packaging Act further requires that tobacco product packages be "drab dark brown"
(specified as Pantone 448C in the Regulations) in a matte finish, with no other colors, logos, or brand
features visible on the package, other than the bran d and variant name in a standard form and font
below the graphic health warning.7 Tobacco product packaging will continue to contain graphic health
warnings,8 which are increasing from 30 percent to 75 pe rcent of the front surface of each package
and continue to cover 90 percent of the back surface of the package. 9 The Plain Packaging Act and its
implementing Regulations also regulate the physical features of retail tobacco packaging, imposing a
standard form on the type and size of the package to be used.
10 The Plain Packaging Act provides that
cigarette packs and cartons must have a standard ized shape with no decorative elements, and that
cigarette packs must have flip-top openings. 11 The lining of cigarette packs must only be foil backed
with paper, or a material allowed by the Regulations.12

 Australia's measures, especially viewed in th e context of Australia's comprehensive tobacco
regulatory regime,
13 appear to be inconsistent with a num ber of Australia's obligations under the
TRIPS Agreement, the TBT Agreement, and GATT 1994 , including but not limited to the following
provisions of these agreements:

 Articles 1.1, 2.1, 15, and 16 of the TRIPS Agreement and Articles 6 quinquies, 7, and 10bis of
the Paris Convention as incorporated in the TRIPS Agreement because the measures, which
discriminate against tobacco-related trademarks based on the nature of the product, fail to
give effect to the trademark holder's legitimate rights with respect to the trademark, fail to
accord effective protection of the trademark "as is," and fail to prevent acts of such a nature as

3 Plain Packaging Act, Section 26. Section 26 (2) further states that "No mark may appear anywhere on
a tobacco product, other than as permitted by the regulations."
4 Plain Packaging Act, Section 20(1).
5 Plain Packaging Act, Section 20(3). The relevant legislation requirements mean a health warning, a
fire risk statement, a trade description and a measurement mark.
6 Plain Packaging Act, Section 21; Regulations, clause 2.4.1.
7 Plain Packaging Act, Section 19; Regulations, clause 2.2.1.
8 Graphic health warnings are regulated under the Australian Consumer Law, contained in Schedule 2
of the Competition and Consumer Act of 2010.
9 Competition and Consumer (Tobacco) Information Standard 2011 which amends the system of health
warnings mandated through the Trade Practices (Con sumer Product Information Standards) (Tobacco)
Regulations 2004 (the 2004 Regulations). Graphic health warnings taking up 75 percent of the front surface of
each package are mandatory from 1 December 2012.
10 Plain Packaging Act, Section 18; Regulations, clause 2.1.1.
11 Plain Packaging Act, Section 18(3)(b).
12 Plain Packaging Act, Section 18(3)(d).
13 Australia has in place a generalized advertisement ban for tobacco products, set out in the Tobacco
Advertising Prohibition Act 1992 (the "advertisement ban"). In addition, in the eight Australian States and
Territories, retail display bans prohibit the public display of tobacco products in specified categories of retail
stores (the "retail display bans"). See, e.g., Australian Capital Territory's "T obacco Act 1927", section 20; New
South Wales' "Public Health (Tobacco) Act 2008", sec tion 9; Western Australia's "Tobacco Products Control
Act 2006", section 22; Northern Te rritory's "Tobacco Control Act 2011" , section 20; Victoria's "Tobacco
Act 1987", section 6(2AA); Tasmania's "Public Health Act 1997", section 72A; Queensland's "Tobacco and
Other Smoking Products Act 1998", section 26A; South Australia's "T obacco Products Regulation Act 1997",
section 40. At the state and local level, Australia has also implemented bans on the consumption of tobacco
products in certain areas and under certain circumstances ("smoking bans").
WT/DS434/1, IP/D/30,
 G/TBT/D/39, G/L/985

to create confusion by any means whatever with the establishment, the goods, or the industrial
or commercial activities, of a competitor;

 Article 20 of the TRIPS Agreement because the measures constitute an unjustifiable
encumbrance on the use of trademarks;

 Article 1 of the TRIPS Agreement because Australia has failed to give effect to Article 20 of
the TRIPS Agreement in Australia's domestic laws and regulations;

 Article 27 of the TRIPS Agreement because by regulating the physical features of the
patented packs, the measures prevent the norma l exploitation and thus the enjoyment of the
patent rights for tobacco products in a manner that discriminates based on the field of
technology;

 Article 2.2 of the TBT Agreement because the measures constitute an unnecessary obstacle to
trade and are more trade restrictive than necessary to achieve the stated health objectives; and

 Article III:4 of the GATT 1994, Article 3.1 of the TRIPS Agreement, and Article 2.1 of the
TBT Agreement because the measures fail to r espect the national treatment requirement set
out in these provisions by not providing equal competitive opportunities to imported tobacco
products and foreign trademark right holders as compared to like domestic tobacco products
and trademark right holders.

 These violations nullify or impair the benef its accruing to Ukraine under the aforementioned
Agreements.

 The Government of Ukraine reserves the ri ght to raise additional claims regarding the
measures at issue as a result of the consultations.

 The Government of Ukraine looks forward to constructive consultations with Australia in
response to this request and welcomes any suggestions that Australia might wish to make concerning
the date and location for these consultations.