AUSTRALIA – CERTAIN MEASURES CONCERNING TRADEMARKS, GEOGRAPHICAL INDICATIONS AND OTHER PLAIN PACKAGING REQUIREMENTS APPLICABLE TO TOBACCO PRODUCTS AND PACKAGING
Document: Request for the Establishment of a Panel by Honduras
Date: 17 October 2012
Document codes: WT/DS435/16
Complainant: Honduras
Respondent: Australia
Third parties: Argentina, Brazil, Canada, Chile, China, Cuba, Dominican, EU, India, Indonesia, Japan, South Korea, New Zealand, Nicaragua, Nigeria, Norway, Oman, Panama, Philippines, South Africa, Taiwan, Thailand, Ukraine, U.S., Uruguay, Zimbabwe, Guatemala, Singapore, Guatemala, Malawi, Malaysia, Mexico, Singapore, Turkey, Zambia, Peru, Ecuador
Dispute stage: Appellate Body
Agreements cited: Art. 20, 16.1, 15.4, 2.1, 24.3, 22.2(b), 3.1  Intellectual Property (TRIPS)Art. 2.1, 2.2  Technical Barriers to Trade (TBT)Art. III:4  GATT 1994Art. 8, 17  Intellectual Property (TRIPS)

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

Request for the Establishment of a Panel by Honduras

 The following communication, dated 15 October 2012, from the delegation of Honduras to
the Chairperson of the Dispute Settlement Body, is circulated pursuant to Article 6.2 of the DSU.

On 4 April 2012, Honduras requested consultations with Australia pursuant to Article 4 of the
Understanding on Rules and Procedures Governi ng the Settlement of Disputes (the "DSU"),
Article 64.1 of the Agreement on Trade-Related Asp ects of Intellectual Property Rights (the "TRIPs
Agreement"), Article 14.1 of the Agreement on Tec hnical Barriers to Trade (the "TBT Agreement"),
and Article XXII of the Genera l Agreement on Tariffs and Trade 1994 (the "GATT 1994"). This
request for consultations concerned certain Australian laws and regulations that impose restrictions on
trademarks and geographical restrictions as well as other plain packaging requirements on tobacco
products and packaging (the "measures").

Consultations were held on 1 May 2012 with a view to reaching a mutually satisfactory
solution. These consultations clarified certain issues pertaining to this matter, but failed to resolve the
dispute. Therefore, as specified below, Honduras requests that the Dispute Settlement Body (the
"DSB") establish a panel to examine this matter.

A. THE
 MEASURES AT ISSUE
Australia regulates the appearance of marks a nd other design features on the retail packaging
of tobacco products, as well as on the tobacco products themselves. It regulates the appearance of the
brand, business, company or variant name in a standa rd form, font size and location. It prescribes the
colour and the finish of retail packaging for all tobacco products and also prescribes the requirements
for wrappers, inserts and onserts. In particular:

 The brand, business or company name on the reta il packaging must be printed in Lucida Sans
typeface in regular font no larger than 14 points in Pantone Cool Gray 2C. The variant name
must meet these requirements but cannot be larger than 10 points.

 All retail packaging for tobacco products must have a matt finish and be in drab dark brown
(Pantone 448C), with the exception of the health warnings, the text of the brand, business,
company or variant name and the relevant legislative warnings.

Non-cigarette tobacco products, such as cigars , may include a band in Pantone 448C, on which
the following marks may appear: the brand, company or business name and variant name, the name of
the country in which the cigar was made or prod uced, and an alphanumeric code. These marks may
each appear only once on the band and must be printe d in Lucida Sans typeface, no larger than 10
points in regular font in Pantone Cool Gray 2C.

Honduras understands that Australia maintains these measures through the following instruments:

 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 Tobacco Plain Packaging Amendment Regulation 2012 (No. 1), Select
Legislative Instrument 2012, No. 29. These re gulations apply to the retail packaging and
appearance of both cigarettes and non-cigarette tobacco products; and,

 The Trade Marks Amendment (Tobacco Plain Pa ckaging) Act 2011; Act No. 149 of 2011,
"An Act to amend the Trade Marks Act 1995 and for related purposes".

In addition to the instruments listed above, this re quest covers any amendmen ts, extensions, related
instruments or practices.
B. LEGAL
 BASIS OF THE COMPLAINT
 These measures regulating the plain packaging an d appearance of tobacco products for retail
sale appear to be inconsistent with Australia's obligations under the following provisions of the TRIPs
Agreement, the TBT Agreement and the GATT 1994:
 Article 20 of the TRIPs Agreement, because the use of a trademark is unjustifiably
encumbered by special requirements, such as (i) use in a special form, for example, the
specific font size and colour of the brand, busi ness or company name, and, (ii) use in a
manner detrimental to the trademark’s capability to distinguish tobacco products of one
undertaking from tobacco products of other undertakings;
 Article 16.1 of the TRIPs Agreement, because the measures prevent owners of registered
trademarks from enjoying the rights conferred by a trademark;
 Article 15.4 of the TRIPs Agreement, because the nature of the goods to which a trademark is
to be applied forms an obstacle to the registration of the trademark;
 Article 2.1 of the TRIPs Agreement, which incorporates provisions of the Paris Convention
for the Protection of Industrial Property, as amended by the Stockholm Act 1967 ("Paris
Convention"), in particular (i) Article 6quinquies of the Paris Convention, because trademarks
registered in a country of origin outside Australia are not protected "as is", and,
(ii) Article 10bis of the Paris Convention, because Australia does not provide effective
protection against unfair competition to nationals of other countries of the Union and creates
confusion between goods of competitors;
 Article 24.3 of the TRIPs Agreement, because Au stralia is diminishing its level of protection
for geographical indications as compared with th e level of protection that existed prior to
1 January 1995;

 Article 22.2(b) of the TRIPs Agreement, b ecause Australia does not provide effective
protection against acts of unfair competition w ith respect to geographical indications and
creates confusion among consumers related to the origin of the good;
 Article 3.1 of the TRIPs Agreement, because Au stralia accords to nationals of other Members
treatment less favourable than it accords to its ow n nationals with respect to the protection of
intellectual property;
 Article 2.2 of the TBT Agreement, because the technical regulations at issue create
unnecessary obstacles to trade that are more tr ade-restrictive than necessary to fulfil a
legitimate objective; and,
 Article 2.1 of the TBT Agreement and Article III:4 of the GATT 1994, because the measures
at issue result in treatment less favourable of imported products than of like products of
national origin.
 Honduras considers that Australia cannot justify its measures pursuant to either Article 8 of
the TRIPs Agreement as necessary to protect human health because they are not consistent with the
provisions of the TRIPs Agreement or Article 17 of the TRIPs Agreement as a "limited exception" to
the rights conferred by a trademark.
 Honduras considers that the measures described above nullify and impair benefits accruing to
Honduras under the TRIPs Agreement, the TBT Agreement and the GATT 1994.
C. REQUEST
 FOR THE ESTABLISHMENT OF A PANEL
 Honduras requests, pursuant to Articles 4.7 and 6 of the DSU, Article XXIII:2 of the
GATT 1994, Article 64 of the TRIPs Agreement and Ar ticle 14 of the TBT Agreement, that the DSB
establish a panel to examine this matter. Honduras fu rther requests that the panel have the standard
terms of reference, as set forth in Article 7.1 of the DSU.
 Honduras asks that this request be placed on th e agenda of the DSB meeting to be held on
19 November 2012.