Kelly Allison by alicejenny

VIEWS: 15 PAGES: 21

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                Fw: Herald query re IP views on cigarette plain packs
                [SEC=UNCLASSIFIED]
                Kelly Allison to sheena.ireland, aban.contractor                             22/10/2010 05:26 PM
                Classification UNCLASSIFIED
                Privacy
                Categories

From:           Kelly Allison/CBR/lPAustralia
To:             sheena.ireland@innovation.gov.au, aban.contractor@innovation.gov.au


Hi Sheena,

Please find attached the information you requested and my response to the journalist below. I also
phoned the journalist directly to ensure he understood we did not comment about entitlement to
compensation or the amount of compensation. He was pleased we responded and did not need
further comment about this issue.

Please let me know if you need anything further.




 Brief on Plain Packaging media release.doc     Attachment A -Institute of Public Affairs media release. pdf


Thanks,

Kelly Allison
Assistant Director
Marketing and Customer Engagement
IP Australia

P + 61 262832911 I] F + 61 26281 1239 0 E kellyallison@ipaustralia.gov.au
A 47 Bowes Street, Woden ACT 2606 0 PO Box 200, Woden ACT Australia 2606

Visit us at http://www.ipaustralia.gov.au

P Please consider the environment before printing this email
----- FOIwarded by Kelly Allison/CBR/IPAustralia on 22/10/201005:23 PM ----­

From:            Kelly Allison/CBR/lPAustralia
To:              Mark Metherell ---~.
                                 '-1            - - - - - ,




Date:            22/10/2010 03:23 PM
Subject:         Re: Herald query re IP views on cigarette plain packs [SEC=UNCLASSIFIEDj

Hi Mark

Thank you for your enquiry.

I can confirm that the media release from the Institute of Public Affairs is both incorrect and
erroneous. IP Australia has made no comment about any entitlement to compensation or
the amount of compensation. IP Australia has said that plain packaging "......may be seen as
a restriction by trade mark owners on the ability to use their marks. This may result in
tobacco companies challenging the Government's legislation".

I hope this information is of use to you.

Best regards,
                                                                                                   FOl2of21




Keily Allison
Assistant Director
Marketing and Customer Engagement
IP Australia

P + 61 262832911 I] F + 61 26281 1239 I] E kellyallison(ci)ioaustralia.gov.au
A 47 Bowes Street, Woden ACT 2606 0 PO Box 200, Woden ACT Australia 2606

Visit us at http://www.ipaustralia.gov.au

P Please consider the environment before printing this email

   Mark Metherell      Dear Kelly Allison, Please find attache...          22/10/2010 11 :51 :52

From:          Mark Metherell I                               J
To:            "kelly.allison@ipaustralia.gov.au" <kelly.allison@ipaustralia.gov.au>
Date:          22/10/201011:51 AM
Subject:       Herald query re IP views on cigarette plain packs



DearKelly Allison,

Please find attached a release today from the Institute of Public Affairs which says that

according to FOI documents they got from IP Australia. which show IP Aus. raised the

prospect of legal claims requiring the government to pay compensation to the tobacco

industry if plain packs were enforced.

Can you tell me does that remain the view of IP Aust?

Is IP Australia still advising the government on the issue?

Sincerely,

Mark Metherell

Sydney Morning Herald, '--             --'





From: aapmedianet@aapmedianet.com.au [mailto:aapmedianet@aapmedianet.com.au]

Sent: Friday, 22 October 2010 5:30 AII.1

To: NewsDesk

Subject: FOI documents show plain packaging policy risks compensation to big tobacco





    22 Oct 2010 5:30 AM - FOI documents show plain packaging policy risks compensation to
    big tobacco


              FOI DOCUMENTS SUPPORT IPA PLAIN PACKAGING CONCERNS

           TAXPAYER'S DOLLARS AT RISK FROM BIG TOBACCO COMPENSATION


    "Intellectual Property (IP) Australia documents released under FOI support arguments made by
                                                                                                             FOl30f21




     the Institute of Public Affairs that plain packaging is illegal under international IP rules and may
     lead to compensation for big tobacco", Director of the IP and Free Trade Unit, Tim Wilson, said
     today.

     "These documents were released following an FOI request from the IPA to IP Australia. As the
     competent policy and administrative government authority on intellectual property the
     government should listen to IP Australia, they're clearly not".

     IPA calculations conclude that potential compensation could be up to $3 billion a year.

     To view the media release click the link below
     Size: 3,218,067 bytes
     http://www.aapmcdianct.com.au/DAIDA.aspx?j=675589&s=O&k=979817

     To view the attachments click on the link(s) below.

     Distributed by AAP Medianet


     IN#:675589


   '      l'                                                                  {J   Australian Associated Press.
  l ontact Js                                                                                           2008

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                                                                                                                   FOl4 of 21




                Fw: Information Brief - Media Release by Institute of Public Affairs on Plain
                Packaging [SEC=UNCLASSIFIED]
                Ian Goss to: Peter Willimott              .                                      25/10/201008:23
                Cc             Kelly Allison
                Classification UNCLASSIFIED

                Privacy

                Categories


FronT           Ian Goss/CBR/lPAustralia

 To:            Peter WillimottlCBR/IPAustralia@IP_Australia

                Kelly Allison/CBR/IPAustralia(g)IP . Australia

History:               This message has been replied to and forwarded.



Peter

note request below

thanks

 Ian Goss

 General Manager

 Business Development and Strategy Group                      II Phone: (02) 6283 2950 Fax: (02) 6285 4149

 IP Australia                                                 @ Email: ian.goss@ipauslralia.gov.au

 PO Box 200 Woden ACT 2606                                    website: www.ipaustralia.gov.au

 Australia


----- Forwarded by Ian Goss/CBRIIPAustralia on 25/10/201008:21 AM ----­

From:            Philip Noonan/CBR/lPAustralia
To:              Ian Goss/CBR/IPAustralia@IP_Australia
Date:            24/10/201010:21 PM
Subject:         Fw: Information Brief - Media Release by Institute of Public Affairs on Plain Packaging
                 [SEC=UNCLASSIFIEDI

Ian

Could I please see the proposed statement, before it is posted on the internet site.

Philip

----- Forwarded by Philip Noonan/CBRIIPAustralia on 24/10/201010:20 PM ----­

From:            MDB-Exec Ministerial
To:              mlobriefs@innovation.gov.au, kaye.fisk@innovation.gov.au
Cc:              DL-Executive-Executive Only-ALL STAFF, Geoff Sadlier/CBRIIPAustralia@IP_Australia,
                 Michael.Nguyen@innovation.gov.au. Leo O'Keeffe/CBRIIPAustralia@IP_Australia
Date:            22/10/201005:29 PM
Subject:         Information Brief - Media Release by Institute of Public Affairs on Plain Packaging
                  [SEC=UNCLASSIFIEDI
Sent by:         Kostas Arvanitis

Good afternoon

Please find attached an Information Brief titled "Media Release by Institute of Public Affairs on Plain
Packaging".

This brief has been approved by Ian Goss, General Manager, Business Development and Strategy
Group, IP Australia.


The Action Officer is Leo O'Keeffe and his contact number is 6283 7929.

                                                                                                FO) 5 of 21




[attachment "Brief on Plain Packaging media release.doc" deleted by Ian Goss/CBR/IPAustralia]
[attachment "Attachment A - Institute of Public Affairs media release. pdf' deleted by Ian
Goss/CBR/1 PAustralia]


Kostas Arvanitis
Assistant Director
Strategy, Research and Ministerial Support
IP Australia

P + 61 2 6283 2044       I   F + 61 26281 1235            E
kostas.arvanitis@ipaustralia.gov.au
A 47 Bowes Street, Woden ACT 2606               PO Box 200, Woden ACT Australia 2606

Visit us at http://www.ipaustralia.qov.au

..A Please consider the environment before printing this email
                                                                                                   For 6 of21


                                        IP Australia
Minister for Information



  MEDIA RELEASE BY INSTITIUTE OF PUBLIC AFFAIRS ON PLAIN PACKAGliG

Purpose: To infonn you about a media release by the Institute of Public Affairs (IPA)
(see Attachment A) on tobacco companies' entitlement to compensation, and to provide you
with talking points if asked about this.

Background: On 29 April 2010, the fonner Prime Minister announced that the Government 1ill
introduce plain packaging for tobacco products as part of a broader program of tobacco-relate
health refonns (B10/1473 and B10/1912 refer).

In May and June 2010, IP Australia received two requests (one from the IPA) under the Free om
ofInformation Act 1982 (FO!) for infonnation relating to plain packaging. On 22 October 20 0,
the IPA issued a media release stating that IP Australia had advised the Government that the
tobacco companies were entitled to compensation. The IPA calculated the potential
compensation to be up to $3 billion a year. Previously, it was reported in The Australian on
16 September 2010 (Attachment B) that IP Australia considered that tobacco companies rna be
able to seek compensation.

Issues: IP Australia's advice to the Government acknowledged that the tobacco companies
would regard plain packaging as a restraint on the use of their trade marks. As a consequencet
they may seek to challenge the Government's legislation. The advice did not comment on
whetheran.y challenge would be successfuL Nor did the advice suggest that they were entitle to
compensatiOn.

IP Australia's internal papers released under FOI relating to the legal position on Australia's
international obligations highlights possible areas of research and provides some initial opinic ns.




Communication: Talking points on this issue are at Attachment C. IP Australia will place 2
statement in response to IPA's media release on the IP Australia web site.


Ian Goss (02 6283 2008, I           U    Consultation: NIL.                 NOTEDIPLEASE DIS( USS
General Manager
Business Development & Strategy Group    Output Info: IP Australia 1.3
IP Australia
 22 October 2010
Contact: Ian Goss (02 6283 2008)                                            Kim Carr   /   /
                                                                                                                                FOI? of21




                                                                                                    ATTACHMENT B



Taxpayer may take wrap rap on cigarettes

LIMISTIAN KERR

THE government is pressing ahead with a key plank of its preventative health strategy, despite advice from one
of its own authorities warning it may not withstand a legal challenge and could expose taxpayers to compensation
payments.

Ministerial briefing notes obtained by The Australian say plans to force plain packaging of cigarettes "may not be consistent
with Australia's intellectual property treaty considerations" and warn that tobacco companies may seek compensation.

The Constitution and international trade agreements prevent the government from stripping or devaluing property without
compensation on "just terms", including intellectual property rights such as trademarks.

One independent estimate has put the possible compensation cost at as high as $3 billion. But Health Minister Nicola Roxon
insists the government will press on with the measure despite the likelihood of a High Court challenge from the tobacco
companies.

The government says it has "robust" legal advice backing its move. But IP Australia, the agency that administers trademarks
and other intellectual property, has warned that even if making plain packaging mandatory is not found to constitute an
acquisition of property, cigarette companies may still be able to seek compensation.

"Requiring plain packaging would make it easier for counterfeit goods to be produced and would make it difficult to readily
identify these," it said in a brief to the-then parliamentary secretary for health, Richard Maries, copied to Ms Roxon last
September.

The plain packaging move and a 25 per cent hike in tobacco excise were announced late in April. IP Australia noted in a
briefing for Mr Maries dated March 30 and copied to Ms Roxon: "IP Australia is not aware of any overseas jurisdictions
which currently require plain packaging of tobacco products".




                                                              2

                                        r                                FOIS of21




COMPENSATION FOR PLAIN PACKAGING ATTACHMENT
OF CIGARETTES

TALKING POINTS:

•	   Recent media reports that trade mark owners would be entitled to
     compensation following implementation of plain packaging of
     tobacco products are misleading.

•	   Tobacco companies not doubt will see this initiative as affecting
     their interests. So it likely that they may seek to challenge the
     initiative. This is a matter for them to consider.

•	   As smoking kills over 15,000 Australians every year and it is
     estimated the cost of smoking to the community is $31.5 billion
     each year, the Government will strenuously defend any Challenge1
     to this initiative.




•	   The Government has had to balance the interests of trade mark
     owners against the need to address the human and economic costSI
     of chronic diseases associated with smoking to the community.




                                    3
                                                                            i::..t,   "W\, tJ\ ~   FOI 9 of 21




                                        IP Australia
Minister for Information                                                                    BIO/4354



       MEDIA RELEASE BY INSTITUTE OF PUBLIC AFFAIRS (IPA) ON PLAIN

                              PACKAGING


Purpose: To inform you about a media release by the Institute of Public Affairs (IPA)
(see Attachment A) on tobacco companies' entitlement to compensation, and to provide you
with talking points if asked about this.

Background: On 29 April 2010, the fonner Prime Minister announced that the Government will
introduce plain packaging for tobacco products as part of a broader program of tobacco-related
health refonns (BI0/1473 and BI0/1912 refer).

In May and June 2010, IP Australia received two requests (one from the IPA) under the Freedom
ofInformation Act 1982 (FOI) for infonnation relating to plain packaging. On 22 October 2010,
the IPA issued a media release stating that IP Australia had advised the Government that the
tobacco companies were entitled to compensation. The IPA calculated the potential
compensation to be up to $3 billion a year. Previously, it was reported in The Australian on
16 September 2010 (Attachment B) that IP Australia considered that tobacco companies may be
able to seek compensation.

Issues: IP Australia's advice to the Government acknowledged that the tobacco companies
would regard plain packaging as a restraint on the use of their trade marks. As a consequence,
they may seek to challenge the Government's legislation. The advice did not comment on
whether any challenge would be successful. Nor did the advice suggest that they were entitled to
compensation.

IP Australia's internal papers released under FOI relating to the legal position on Australia's
international obligations highlighted possible areas of research and provided some initial
opinions. I




Communication: Talking points on this issue are at Attachment C. IP Australia will place a
statement in response to IPA's media release on the IP Australia web site.

Slipstream Version 25 October 2010
Ian Goss (02 6283 2008,1       I         Consultation: NIL.
General Manager
Business Development & Strategy Group    Output Info: IP Australia 1.3
IP Australia
 25 October 2010
Contact: Ian Goss (02 6283 2008)
                                                               ----                                       FOI 10 of 21




        Iii

        Institute of Public .\ffairs      I Australia's leading free market think tank

        LC\'c\ 2, ·t l(l Collins SI. :-'Idbournc ph: 03 %004744 ipa@ipa.otg.au www.ipa.org.au

Friday, 22 nd October 2010

               FOI DOCUMENTS SUPPORT IPA PLAIN PACKAGING CONCERNS

            TAXPAYER'S DOLLARS AT RISK FROM BIG TOBACCO COMPENSATION


"Intellectual Property (IP) Australia documents released under FOI support arguments made by the
Institute of Public Affairs that plain packaging is illegal under internationallP rules and may lead to
compensation for big tobacco", Director of the IP and Free Trade Unit, Tim Wilson, said today.

"These documents were released following an FOI request from the IPA to IP Australia. As the
competent policy and administrative government authority on intellectual property the government
should listen to IP Australia, they're clearly not".

IPA calculations conclude that potential compensation could be up to $3 billion a year.

"Taxpayer's money shouldn't be put on the roulette table with odds-on that they will boost the
profits of big tobacco and not for healthcare provision".

"Introducing plain packaging is also the thin edge of the wedge. What's next? Plain packaging of
alcohol, pharmaceuticals and food?"

According to the IP Australia FOI documents requested by the IPA:
•	 IP Australia believes plain packaging would be inconsistent with Australia's internationallP treaty
   obligations (page 140) and may result in taxpayer's dollars being paid to big tobacco (page 127).
•	 The government's announcement was deliberately rushed (likely as a smokescreen to distract the
   public over the government's dumping of the ETS) so much that not even the Department of
   Health and Ageing was given much warning of its announcement (page 1573).
•	 A Senior Trademark Office official in IP Australia argued that the legal position of the Department
   of Health and Ageing was drawing a "long bow" and internationallP treaties were designed to
   stop measures like plain packaging (page 1510).
•	 Plain packaging may breach Australia's obligations under the Australia-United States Free Trade
   Agreement (page 1474).                                                      .
•	 Innovation Minister Kim Carr was advised by IP Australia that plain packaging may be seen as a
   restriction on trademarks and result in tobacco companies challenging the legislation (page 127).
•	 IP Australia has barely been consulted on this IP rights violation (page 69).
•	 Plain packaging would make the trade of counterfeit tobacco products easier (page 138).
•	 Up to 1,000 trademarks could be affected as a result of plain packaging (page 70).

"These documents back up what the IPA has argued all along - if the government undermines IP and
introduces plain packaging the taxpayer will foot the bill".

"The government's absurd proposal was introduced because they wanted to distract the public
during the dying days of the Rudd government. It's time they were honest with the Australian
people, stopped gambling taxpayer's dollars and dumped plain packaging", Mr Wilson said.

Attachments:	            Freedom of Information documents from IP Australia

Media contact	          Tim Wilson       Director, IP and Free Trade Unit          0417356165
                        Tony Barry       Operations Director                       0419600879
                                                                                                       FOl110f21




                                                                                      Fa! 69 of 1660




              Plain Packaging on tobacco products




Background

On 7 November Trevor Stevens of Davies Collison Cave \'rTote to us drawing our
attention to the National preventath'e task Force report Australia, the healthiest
Country by 2020. In particular he drew 0\U' attention to recommendation on page 23
which recommends mandatory plain packaging for cigarettes

Note the taskforce has advertised it will be holding meetings in cities and rural centres
until February. 2009, There is no indication on the website where these are.

Submissions closed 2 January 2009.

This was the first lime IP Australia had been aware ofthe review or the repon. At no
time were we consulted.

The technicllll>aper Making smoking History wa., released on 10 October 2008. It
recommends mandatory packaging requirements:

Plain packagillg would prohibit brand imagery, colours, corporate logos and
trademarks. permiUing manufacturers only to print the brand name in a mandated
size, font and place, ;71 addition 10 required health warnings and olher legally
mandated product in/ormation such as toxic constituents. tax paid seals or pCJcKage
contl?nlS. .4 standard cardboard texlllre would be nlandatory,a"d the size and shape of
the package and cellophane wrapper would also be prescribed. A detailed analysis of
Cllrrent marketing practices[l8 7J suggests lhat plain packaging would also need to
encompass pack interiors and Ihe cigarel/e Use!!. given Ihe potentialfor
manufacturers to USt' colours, banding sand markings. and different length and
gauges 10 mtlke cigarelles more 'interesting' CJnd appealing. Any use ofperfuming,
incorporation ofaudio chips or affixing of 'onserfs' would also need fo be banned.

Another recommendation (page 22 of technical paper) states that health warning
should encompass 90% of the front of the package and 100% of the back

This has implications for trade mark owners. However, the arguments nre not new and
have been put forward before when the government legislated to
                                                                                                                                FOl12 of 21




                                                                                                                FOl1O   of,.j
•	   Restrict tobacco advertising
•	   Restrict point of sale advertising
•	   Place health warnings on packets
•	   Restrictthe use l)f'light' and 'mild'

Plain packaging was recommended in Australia in the mid 1990s. Australian Senate
Community Affairs References Conunittee I concluded that there was "not sufficient
evidence 10 recommend that tohacco products be sold in generic packaging

Australian trade markJI
•	 3000 trade marks for tobacco and tobacco products
• A shoTt study shows approximately 1/3 include logos
Major local manufacturers
•	 British American Tobacco
•	 Philip Morris
•	 Major brand -Marlboro (Also owns Kran foods)
•	 Imperial Tobacco

Issues

Is this recommendation compliant with our international
obligations
The tobacco industry is arguing that mandatory plain packaging would be contral)' to
TRIPS, GATT and Paris:

TRIPS
•	 would be contrary to TRJPs
          o	 "The proposed ban unquestionably would constitute a •special
              requirement' that would
encumber the use and fune lion of valuable. well known trademarks,"[
          o	 Anicle 15(4) the nature of the goods ... shall in no way form an

              obstacle to registration

          o	 Article 20 a trade mark shall not be unjustifiably encumbered by

              special requirements detrimental to its capacity to distinguish the

              goods and services


Counter argument

"plain packaging is not concerned with encumbering the use of trademarks

but with the sale of cigarettes as a product that is potentially hannful to the public.

"the TRIPS obligation is conditional on public health (Article 8(1)

•	 Article 20 is not breached because the restrictions are justifiable on the grounds of
    public health
•	 The rights under TRIPS are so the trade mark O\\71er can prevent all third panies
    form using their trade mark




1 II Report (If the Senale COlnmunily Affairs Ref~e"~es Ccmmitlc=e. "Thf tolHH:co fHtlUllry a"d IItt tlnl1 of
tobacco "lat,cJ ill",,!!, .. (December ) 99S)
                                                                                                              FOl13 of 21




                                         I1SR·-Io-Coofideuce                                 FOl127 of 1660

                                         IP Australia
 Minister for Jnformation                                                                Min 10: BlO/1912
                                                                                                REVISED
 cc Parliamentary Secretary

             PLAIN PACKAGING OF TOBACCO PRODUCTS (CIGARETTES)

 Purpose: To infonn you of the Government's decision to introduce plain paper packaging for
 tobacco products as pari of 8 broader program of health refonns in Australia.
 Background: IP Australia has previously advised the Parliamentary Secretary on proposals for
 introducing plain packaging for cigarettes and other tobacco products (810/1473 nfen). This
 brief updates BI0/1870 which previously advised you about the Government's decision.
 The Prime Minister announced on 29 April 2010 that the Government will introduce plain
 packaging for tobacco products as part ofa broader program of tobacco-reJated health reforms.
 DoHA has advised that it is proposed for this reform to commence on 1 ]uly 2012 following
 research and analysis on how implementation is to be achieved. Implementation wiU likely be
 lhI'ough amendments to legislation relating to advertising rather than the Trade Marks Act /91}5.




 Mr Tim Wilson of the Institute of Public AtTairs stated in the AustraJian newspaper on
 30 April 2010 (Attachment A) that this initiative is contrary to intemationallP rules 8S it will
[E:;     the -mill! of.      :me nwk :      ~~ngyjsh MOda        or   savj""   IExemPI        ]
 SealltiviU~: Yes. Implementation ofplain packaging for tobace:fO ~ucts may be s~ as a
 restriotion by trade mark owners on the ability to usetbcir marks. This may result in tob~
 companies challenging the Government's legislation. DoHA bas advised that they are aware of
 this risk. The tobacco companies may also question the supporting evidence for this initiative.
 Please find attached Talking Points (Attadlment B) to guide you if your office is approached.
 Slipstm~m   version: JO April20JO
 Robyn Foster (02 6283 2093/0413458 15.5) Consultation:
 G~neral Manager                          Dept ofHcalth and Ageing (DOHA.~))1'-,..--7
 Trade Marks and Designs Group                                                     1/.t.~Jt~:?"
 rP Australia
 30 April 2010
 Contacl: Leo O'Keeffe «02) 628) 7929)     Output Info: IP Australia 1.3         Klmc~O/~(O

                                         IISR-Io-Confidence
                                                                                                           FOI 14 of 21




                                                                                            FOI 138 of HltiO

                                        IP Australia
Parliamentary Se~reCary                                                                      B09/4084
For Meeting
cc Minister

 MEETING WITH MS ANNA STEFANATOS It'ROM PHILIP MORRIS LIMITED (PML)

Purpose: To provide you with background information for your meeting with PML.

:\fleeting Arrangements

Date:                23 September 2009
Time;                10;30 am ~ 1r:30 am
Venue:               J7A Yarra Street, Geelong
Present:             Parliamentary Secretary Richard Maries, Ms Karyn Murray (Adviser), Ms
                     Anna Stefanatos (Philip Monis Limited)

Recent DeaUngs: Mr James Arnold (Director Corporate Affairs, PML) met with Mr IBn Gass
and Mr l.eo O'Keeffe (IP Australia) on 17 September 2009.

Key rssues: The National Preventative Health Taskforce has recommended the introduction of
plain packaging oftobacc() packages. This would prohibit brand imagery, colours, corporate
log05 and trade: marks from these products.

PML is concerned that:
   •	 There is no evidence to support a link between plain packaging and the level of smoking.
   •	 Brand owners will not be able to use their brands to distinguish their products and will

       have to usc price differentiation which could result in tobacco products becoming

       cheaper.

   •	 The illicit trade in tobacco products would increase.
   •	 Acceptance would be contrary to international agreements such as TRIPS and the Paris

       Convention,

   •	 Plain packaging would be a fom1 acquisition of property.

The Govemment is yet respond to the Taskforce' 5 recommendatiol1s: Given the breath of the
recommendations, a whole of government approach may be required.

LP Australia considerslhat plain packaging may not be con~istent with Australia's intellectual
property treaty obligations (Attachment A). Whether or not a requirement of plain packaging
would actually constitute an acquisition of property is debateable. How~ver. that may not
prevent tobacco companies from seeking compensation. Requiring plain packaging would make
it easier for counterfeit products to be produced and would make it difficult to readily identify
these counterfeit goods. IP Australia is not able to give an opinion on the likely rise in the Jevc:l
of counterfeiting.

J P Australia is not able to advise on whether there is a link between plain packaging and the level
of smoking.

Plain packaging was considered in the United Kingdom and was not implemented.

Lobbyist Register: NO. Anna Stefanatos is the Regulatory Affairs Manager of Philip Moms
Limited.
                                                                                                        FOl150f21




                       Plain Packaging and International Treaties

.The lirst part of Anicle 20 of the Agreement 011 Trade-Related A.~pects ofintellectual Property
 Rights (TRIPS) requires that:

      "The use of a trademark in the course of trade shall not be unjustifiably encumbered by
      special requirements. such as use with another trademark. use in a spedal fonn or use in a
      manner detrimental to its capability to distinguish the goods or services of one undertaking
      from those of other undertakings."

Requiring plain packaging would be regarded as encumbering the ability ofan entity to
distinguish its goods through its trade marks from those of other entities. IP Australia's
understanding is that this Micle was drafted with the intention of restricting mechanisms )ike
plain packaging. .

However, Article 8( I) of TRIPS allows for members to adopt measures necessary to protect
p~blic health. This Article could be seen as possibly allowing plain packaging as it could be
regarded a necessary measure for protecting public heaJth and therefore avoids the requirements
of Anicle 20. But the flnal pan of this Article stipulates that measures like this have to be
consistent with the rest of the provisions of TRIPS. Therefore it seems unlikely tbat this Article
could be used to ovoid Alticle 20.

Other relevant articles arc Article 7 of the Paris Con vention for lite Protection of Indusrrial
Properly (Paris Convention) and TR.IPS Article 15(4). Article 7 states that:
         "lne nature of the goods to which a trademark is to be applied shall in no case form an
         obstacle to the registration of the mark,"

AJ1icie 15(4) of TRIPS is the same but extends to services as well. These articles would appear
(0 make it difficult to restrict the ability of trade applicants to register trade marks for products
like tobacco.
                                                                                                                                                     FOI 16 of 21




!iW12.-1494 """""'
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                                                                                                            I
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                                                                                                                 FOI 1336·57
                                                                                                                                                       ',.


I                                                                                                                Release In full:
                                                                                                                                                       ;
~                                                                                                                F011359-62, F011387-89, FOI
                                                                                                                 1396-98, F011404-OO and F )1
                              I                                                                                  1413-15
                                                                                                                 Release In full:
\                                                                                                                FOI1365-72
:                                                                                                                Rete••e In Part:
i
             !
             ;
                                                                                                                 FO) 1472 - 1496 - s 42
1            ,
             I



ITW~;:_lr-F-O-,·-,-49-S-+-I!·-12-Ja-n-U-a-ry-2-0-1-0-+-0r;ft-letter to US- - - - - - - - I - - - - - - - - - - - - ! - - - iin
             i	                                               ----
                                                                         Charnberof Cornmerce    Exempt:
I            I                                           2010-01-12                                              FOl1495 - s 33(1)(a)(iii)             II
             i                !                                                                                                                        ~
             I                                                                                                                                         ~




                                  .~--


             !
                  F011507·         2009
                  1509
                             -",_."...
                  fOI f610     18 J.anuary 2009


                  FOl1S11          14 May 2010




r
; TW31.	          F011512·          11 May 2010          British American Tobacco Brands·                        Release In full                       Ii
                                                                                                                                                       'I
                  1515                                   compilation from BAT website                                                                  :1

    TW32.   ,-FOI'.;;'-            Janua~ 20'0           Po',ls (IP Australia ",mm"'!') on     F;.~;ng           R...... 'n .."                        i
            _j~~17                                _-+_B_il_1---------------+-----------1--11
                                                                                           1
I TW33.     I     FOl1518                               Text (sent to PNoonan by DPS] advising of Release In full                                      II
f---.
                                   16 January 2009
                                          __._ _--Il.'_P_A_u_st_ra_h_-a_'s_po_si_tlO_n_o_n_p_'_ai_n_pa_c_k_a__in__-+-
                                                                 _                                         9 9                                 f----j  i l
i TW34. FO"S19· 16 June 2009
'                            Summary on plain packaging by IP Release In full
i	      1524                 Austral1a· draft
l------+-----t--------t---------------+----------l--ll
    TW35. I FOI1525·               various               9 further internal draft documents with mark            Releese In full                             :
I           1570                                         up and comments

LTW36~--~-FO-11-5-7-1-.      -+-7-J-a-n-U-ary-2-0-1-0-t-- - -,U-S-C-h-a'm-be-r-O-f-C-o-m-m-e-rc-e-t-o-O-G-O-f-+ Release In part:
                                                        Emai
                                                                                                                                             ----II
            , 1572             I                        IP Australia                                            s 33(1)(b) and lor s 33(1)(a)("ii)           ,

        i
_ _ _.......                  ,              .      ...J-	                                                ..Ji                                -+---II
                                                                                                                                                             !
                                                                                                                                                               FOI17 of 21




                                                                                                                                                 FOl1510 of 1660



Hi     ~:I\rer.:

F~.lu.ing            from yo~r comments yest~rday about tobacco a few quick thinys
come to mind.            H()i?e r.l\"'y help i 11 yOUX' 1 esear.::h.

'1';-1125 8 ;0,

I'm not surprised th~t (was it. Healt.h?) are arguing that Article 20 is

ambiguous· it. sllits their purposes f::>r that. However:

  I t is pretty <:11E'hu from (people T. 've spoken to who \\'ere '!'RIPS
  negotialr)ld ancl) the negotlation <.l<)cumen~s that th.is .is exactly the
  issue chat 1\20 -"as ta.rget.ad at.    Yl.lll could 100), at tne negotiatin']
  documents.
  "shall not:. be unjustifiably encumbered" • it i/5 -pe:tthapa possible ~o
  argue thn thare is Justification· but th,!t is '" long bow r think.
  "by special n,quit·emell!:.s such as '"       use in a special form .... or
  use in a mann~r detrimental to capacity to d1Btingu~~·. Perhaps if
  thltre is a uniform requlrem~nt tbat the trade 11\3rk will s1't in the
  bottom quarter and otherwise the packet is blan~ it may be possible
  to argl.ie tbat thal lip.lCE! ia where consun:ers wi 11 look. However, th~s
  ia an argument that \o:ould n~ed to be made rather than the other way
  around,

li!Q
1bere was a WTC panel dispute last ye~r(Indone~ia defending against a US
action), ~hi]ot it related to branding for cars,it tuuched on Article 20
encul",brances.

       r~y ",emory i.s thac, it suggested that anything that .....hich precluded use
       of a trade rr,ark (as .. :leqed by the USA} would be a sed OilS breach of
       A ::: n hltt: t r.ar WiHI not. support ~d by t.he f.acts c f the case.

       WT/DS54!R           d~Led        2nd July 1998

fi.!l..ili.s;onvent ion             AtJ:.j,~
       W~ .... ou~cd need to be car.~f\\l that t.he provisions relating to
       advert ising ''''crt? not so comprehensive th~t "use would be conr.ral'Y t.O
       law" or we would be j'"rced to ['eCu"e registration in contravention of
       this art.icle.


~ly    ,nernc>ry i:'l t.ha'.: lhe EC Health Re9\\lClti.QI1                                   (sen'r.,. don't ha'll' t.he number)
ilddresses t11il> in <lome wal that would preclude Europe from a "plain
packagi~g policy".


'nIB UK revie~:ed ll:\~ir policy las: year' with a Bill int:loduced in January
this year. The L'epantT.ent of Health decided it was not practical
(le9a1'i'! LO int;roduce a plain packaging re<f.lirem'mt and it: .is not 1
r.hink in T,he Bill. r understand however. that it wa6 raised in the
debate in ·the HOUSE of Lonl;; but that the Government are nD( supportin9
it,

rtf-    UK     ~iJ   1 i,,;,
:"'.\. tp: II~);. ." , 'Jh. ~~.; . ul( / <tn/ P . . l':L i ~:a!... it.'n1:iall{h::;.: i st ~_C!'j f?whl i ca (. ior.siPub2 icat ior.s7~~gi M ~H. j rlrj;m
                                                                                                                                            1
 U91:;'i~
                                                                                                             FOilS of 21


                      . . . "._- -_._--_ _._._._._.._.__   __.-_ _--_._----------+--..
                                                                                          FOI 1474 of 1660

                                                                                  BRIEF NO.

PLAIN PACKAGJNG OF TOBACCO PRODUCTS

SUBJECT
Mandatory plain packaging of tobacco products has been proposed in a private members bill by
Senator Fielding, and as a recommendation made by the National Preventative Health Taskforce in
its National Preventative Health Strategy. AustrCl/ia: the healthiest COIJ11try by 2020.

CURRENT SITUATION/ISSUES
What is involved in tbe proposals?
     •	 Senator Fielding, proposed the Plain Tobacco Packaging (Removing branding/rom

        cigarette packs) Bill 2009 in August 2009. If enacted the Bill would:

            o	 prohibit the use of trademarks, logos and words other than a 12 point black Helvetica
               font listing lhe brand, number of cigarettes or the amount of tobacco in the package,
               and in 8 point size list the manufacturer or importer's name; and
            o	 require cigarettes to be packaged in plain matt brown paper.
     •	 The Taskforce proposes prohibiting brand imagery, colours, corporate logos and trademarks,

        and permitting manufacturers only to print the brand name in a mandated size. font and

        place. in addition to required health warnings etc.

Previous Senate lind Government positions on plain packaging
     •	 In 1995, the Senate COmnl\.U1ity Affairs References Committee concluded thauhere was

        insufficient evidence to n=commend that tobucco products be sold in generic packaging.

     •	 In 1997. the Government response:
            o	 agreed to further investigation of the effieacy of generic packaging as a means of
               enhancing the impact of package warnings; and
            o	 emphasised that any further regulation would need to be considered in the context of
               Australia's international obligations. for example the Paris Convention and TRIPS.
Compliance issues
     •	 Implementation of plain packaging in Australia raises controversial treaty and trade issues

        concerning the use of trademarks

     .'	 Some see the proposals as violating TRIPS and Paris including in tenns of:
            o	 unjustified cncwnbrances which undennine a trader's ability to distinguish their
               goods or services from others~ and
            o	 abrogation or rejection of trademarks beyond what is pennitted under. or in conflict
               with, these agreements.
     •	 The Australia and US Free Trade Agreement (AUSFTA) also imposes obligations regarding
        how Australia treats US investments made in Australia.

fExempt


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f
I
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f	
                                                                                   _._ _----­
                                  IA                                                                                  FOl190f21




                                                                                                   FOI 1573 of 1660




                 Fw: Plain Packaging [SEC=IN-CONFIDENCE]
                 Ian GO&6 10; Philip Noonan                                            231041201004:11 PM
                 Cc:         "Fatima Beatlle", "Robyn FosL8I"
                 ClassiflClJlion UNCLASSIFIED
                 Privacy
                 Categories

 Classification: In-Confidence

 Philip

 FYI. Leo will advise Edwina and Karyn and confirm any briefing requirements. Nole the intent i5 \0
 amend current lobacco legislation nOltha TMs ael.

 Regards

   Leo O'Keeffe


    ••_- Original Message --.-.
        From: 1eo O'Keeffe

        Sent: 23/04/2010 03:41 PM ZEIO

        To: Ian Goss

        Subject: Plain P.;Ickaqing rSEC 1N-CONF'IDENCE)

                                                3


 lan,

 Outcome of our meeting wlth DoHA. We met with SJman Cotterell (Asst Sec, Drug Stralegy BranCh)
 and Adrian White.

 On TueSday the Government will be ennounc:ln9 8 numb!,," of heelth refOrms. Included In this wilt be
 an &nl'Louncement to introduce plein peck8glng (01 CiQ8rettes.

 The intention is that legislation will be developed to introduce tRis, but with further research, analysis
 and consultation to take place dUring the second half of the year. The Government is looking to have
 this in place by 1 January 2012.




remP1



 DoHA will provide us with some Q&A's after the announcement is made.
                                                                             --------J
                                                                                                        I

 It W$ very clear from,tbel{l8eting that DoHA have only reoent,IY'been eclVisQd that 1hIs i$ what the
 Gove,mment waf 901"9 tl> do. They certainlY dldft't know abOUt this Gertler In the week. A1sa--l
[~)(empt                                   _                      I                              L-J
 They ar. aware or the backlash likely from tobacco companies and the US ChamtlQr of Commerce
 and ttle real likelihood that these might challenge any legislation in court.

 Leo
                                                                                                    ATTACHMEN B

.. TUE AUSrrRALI AN


Taxpayer may take wrap rap on cigarettes
LIMISTIAN KERR

THE government is pressing ahead with a key plank of its preventative health strategy, despite advice from one
of its own autoorities warning it may not withstand a legal challenge and could expose taxpayers to compensation
payments.

Ministerial briefing notes obtained by The Australian say plans to force plain packaging of cigarettes "may not be consist
with Australia's intellectual property treaty considerations" and warn that tobacco companies may seek compensation.

The Constitution and international trade agreements prevent the government from stripping or devalUing property without
compensation on "just terms", including intellectual property rights such as trademarks.

One independent estimate has put the possible compensation cost at as high as $3 billion. But Health Minister Nicola ROjOn
insists the government will press on with the measure despite the likelihood of a High Court challenge from the tobacco
companies.                                       .

The government says it has "robust" legal advice backing its move. But IP Australia, the agency that administers trademars
and other intelectual property, has warned that even if making plain packaging mandatory is not found to constitute an
acquisition of properly, cigarette companies may still be able to seek compensation.

"Requiring plaln packaging would make it easier for counterfeit goods to be produced and would make it difficult to readil1
identify these,· it said in a brief to the-then parliamentary secretary for health, Richard Maries, copied to Ms Roxon last'
September.                                                                                             .

The plain packaging move and a 25 per cent hike in tobacco excise were announced late in April. IP Australia noted in a
briefing for Mr Marles dated March 30 and copied to Ms Roxon: "IP Australia is not aware of any overseas jurisdictions
which currently require plain packaging of tobaCco products".




                                                              2

                                                                                 FOl21 of 21
t   •




        COMPENSATION FOR PLAIN PACKAGING ATTACHMENT C
        OF CIGARETTES

        TALKING POINTS:

        •	   Recent media reports that trade mark owners would be entitled to
             compensation following implementation of plain packaging of
             tobacco products are misleading. .

        •	   Tobacco companies not doubt will see this initiative as affecting
             their interests. So it likely that they may seek to challenge the
             initiative. This is a matter for them to consider.

        •	   As smoking kills over 15,000 Australians every year and it is
             estimated the cost of smoking to the community is $31.5 billion
             each year, the Government will strenuously defend any challenges
             to this initiative.




        •	   The Government has had to balance the interests of trade mark
             owners against the need to address the human and economic costs
             of chronic diseases associated with smoking to the community.




                                             3


								
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