Trademark Laws as Applied to Tobacco Products

    Trademark Laws as Applied to Tobacco Products

    The tobacco industry is not only highly lucrative; it is also extremely competitive. There are many leading tobacco brands which seek to capture a large portion of the target consumer group. For this reason, many of these tobacco brands apply for trademarks for their brands as well as products associated with them.

    However, the consumption of tobacco is a health hazard to both the consumer as well as surrounding people. Thus, to encourage the reduction of tobacco use, many governments have enacted policies and laws which impact tobacco products. Some of these policies and laws pertain to trademarks related to tobacco products.

    Intellectual Property Laws and Public Health

    One way by which trademark laws affect tobacco products is the intersection of intellectual property laws and public health. According to most intellectual property treaties, governments are permitted to restrict trademark use for the purposes of public health. Additionally, the World Health Organization’s (WHO) Framework Convention on Tobacco Control (FCTC) states that manufacturers of tobacco products are barred from openly advertising or promoting these products. The convention also mentions that tobacco product manufacturers are not to use their trademarks to incentivize the public to purchase their products.

    In spite of these legal restrictions, some tobacco companies have attempted to persuade governments to relax intellectual property laws imposed on tobacco products. They claim that according to the Paris Convention, their registration of the trademark allows them unlimited use of it. For this reason, they believe that they should be allowed to advertise their products as they desire. Many legal battles around the world have been fought over this issue.

    Intellectual Property Rights and Plain Packaging of Tobacco Products

    Tobacco product manufacturers often cite their intellectual property rights to challenge laws requiring their products to be sold in plain packaging which contains graphic images of disease. However, these manufacturers should proceed with caution when deciding to challenge these laws because most intellectual property agreements do not allow tobacco manufacturers’ trademarks to take precedence over the packaging requirements for tobacco products.

    According to the Paris Convention, a government does not have to permit the use of any registered trademark. Such is often the case with tobacco products. If a government limits but does not ban tobacco-related trademarks from registration, the government remains within the bounds of the Paris Convention. Additionally, the TRIPS Agreement provides governments with exceptions to address public health needs. Tobacco products may be classified as such an exception.

    How Tobacco Product Manufacturers May Use Their Trademarks

    Despite the restrictions on tobacco-related trademarks in many parts of the world, manufacturers are nonetheless permitted to use these trademarks in accordance with prevailing laws. Like other trademarks, tobacco-related trademarks can be used to prevent consumer confusion by distinguishing a product as being one from a specific producer.

    Tobacco product manufacturers neither have to engage in formal, large-scale advertising nor place their products in elaborate packaging to abide by these restrictions. Intellectual property courts, meanwhile, are to promote the proper use of trademarks in a way which neither glorifies nor encourages tobacco consumption. By adhering to regulations in force, tobacco manufacturers can make use of all the key functions of their trademarks. At the same time, governments are to formulate policies which discourage tobacco consumption but do not deny manufacturers their trademark rights.

    Trademark Laws and Electronic Cigarettes

    As electronic cigarettes contain nicotine derived from the tobacco plant, many of the trademark laws pertaining to other tobacco products also apply to electronic cigarettes. The use of trademarks to advertise, market, and sell electronic cigarettes in most countries is subject to similar regulations linked to other tobacco products. This is because although electronic cigarettes’ health effects are less negative than those of other tobacco products, they nevertheless cause damage to one’s health.
    Electronic cigarette manufacturers have sometimes violated trademark laws themselves. Some of these manufacturers have used existing food and beverage brand names as part of the names of their cigarette flavours. Examples of such brand names appropriated by electronic cigarette companies are Snickers, Nutella, Thin Mint, and Cinnamon Toast Crunch. As the manufacturers are not licensed to do so, this is therefore a blatant violation of other companies’ intellectual property rights.

    This article is brought to you by Exy Intellectual Property Malaysia and Singapore.