This is a guest blog from Christopher Morcom QC (Hogarth Chambers, contributor to The Modern Law of Trade Marks (LexisNexis Butterworths), the 3rd edition of which has recently been published). Christopher writes:
The IPKat -- a confirmed non-smoker -- has little sympathy for the habit. But he is concerned that the provisions of the law should be respected. Merpel wonders whether, within the context of a single European market, this is an issue that it is wise to leave to individual EU member states anyway. What do you think? Do let the Kats know.
"Recently announced Government proposals regarding the advertising and sale of cigarettes include the suggestion that the use of “colourful branding and fancy logos” would make tobacco products less appealing, particularly to young people. One possibility suggested is that cigarettes will only be permitted to be sold in plain white packs, bearing health warnings, and the brand name in small letters.
Right: how strange the old cigarette packets look, without the now-traditional health warnings
These proposals seem to raise serious issues from the point of view of brand owners. Brand names for cigarettes are registered as trade marks an a variety of forms: the brand names, sometimes in distinctive type faces; logos or designs incorporating the brand names; and representations of the packs themselves, or their front panels. Companies spend money registering and protecting these trade marks. The significant costs include application fees, registration fees and renewal fees, paid to the state or (in the case of Community trade marks) OHIM.
A question that immediately arises is whether the state can take away something, for which it has taken money from brand owners in the form of these fees, by saying (in effect) “we have taken your money for registration of your trade marks, but you may not now use them”. But there are further questions. The Trade Marks Act 1994, s.2 , enshrines the principle (if it was ever otherwise) that a registered trade mark is a right of property. Section 22 confirms that a registered trade mark is personal property (in Scotland, incorporeal moveable property) and s. 27 confirms that an application for registration is an object of property. The CTM Regulation (Part 4) likewise treats a CTM as an object of property. The European Court of Human Rights in Anheuser-Busch v Portugal  ETMR 24 has held that Art 1 of Protocol 1 to the European Convention on Human Rights applies to intellectual property, including trade marks, and that an application for registration of a trade mark is a substantive interest protected by Art 1, as giving rise to rights of a proprietary nature. In that case the claimant had complained of an infringement of its right to the “peaceful enjoyment of its possessions”, as expressly protected by Art 1.
No doubt the Government (if it proceeds with its proposal, rather than changing its mind) would seek to argue that the proposal is in the “public interest”. But even public interest is subject, under Art 1, to “the conditions provided for by law and by the general principles of international law”. So whether the Government could justify the proposal as being in the “public interest”, without regard in particular to international treaties such as the Paris Convention and TRIPs, is a very serious issue which should be addressed. After all, it should not be forgotten that cigarettes and other tobacco goods are lawful products and that no government could afford to make them otherwise".