Bird and Bird LLP

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Background

Bird & Bird LLP is an international commercial law firm with offices in Europe, the Middle East and Asia, as well as close ties with firms in other parts of the world. According to its website, the company employs 1100 lawyers in 28 offices.[1]

Tobacco Industry Links

In 2011 Bird & Bird included Philip Morris International (PMI) among their clients, providing expert legal advice to the company on plain packaging legislation (see below).

Bird & Bird and Plain Packaging

Philip Morris International Consult Bird & Bird

Image 1, Bird & Bird reflect on the importance of the Marlboro brand, September 2011

The UK Government indicated in March 2011 that it intended to consult on plain tobacco packaging. In light of this, in September 2011, PMI commissioned Bird & Bird to produce a paper which analysed the policy of plain tobacco packaging ‘with a view to the United Kingdom’s obligations under international trademark law’.[2] The expressed purpose of the report was for PMI to share it with ‘external stakeholders’.

In the report, Bird & Bird’s conclusion was that:

“Our assessment is that plain packaging would violate certain trademark provisions in the Agreement on Trade Related Aspects of Intellectual Property (TRIPS) and the Paris Convention for the Protection of Industrial Property. This would put the United Kingdom in breach of its international treaty obligations, exposing it to dispute resolution proceedings and sanctions within the framework of the World Trade Organisation (WTO).”[2]

Bird & Bird defined trademarks as ‘wordmarks’ and ‘logos, devices, colours, combinations of colours and shapes’. Using PMI’s Marlboro ‘rooftop’ branding as an example, they explain the importance of these trademarks to the public (see Image 1). [2]

The report further emphasises that: “A trade mark is also a guarantee of quality so a customer will always know that that he will getting a consistent high quality product when he buys a pack of Marlboro cigarettes.”

The bones of Bird and Bird’s argument as presented in their advice to PMI is that a trademark confers a positive right to its owner, meaning that they have the right to use it. By contravening this right they claim that plain packaging renders trademarks ‘meaningless’. Specifically, Bird and Bird claim that plain packaging violates Articles 15(4) and 20 of the TRIPs Agreement[3], and Article 7 of the Paris Convention.[4]

PMI Use Bird & Bird Report to Lobby UK Intellectual Property Office

On 25 June 2012, part way through the 2012 UK consultation on plain packs, PMI emailed officials at the Intellectual Property Office (IPO) and appended the Bird & Bird report. The email followed a meeting with the IPO the previous week where PMI had taken the opportunity to “discuss the current consultation on plain/standardised packaging of tobacco products. We appreciated the time to discuss the various considerations from a trade, legal and illicit trade perspective.” [5] A follow up internal IPO email indicates that the Bird and Bird paper was read by an IPO official – the email refers to Bird & Bird’s conclusions regarding plain packaging being in contravention of international agreements – and suggests forwarding the document to the Department of Health.[6]

Bird & Bird Publish Further Research on Plain Packaging

In 2012, the year after Bird & Bird produced their report for PMI, Phillip Johnson, of Bird & Bird, published a paper on plain packaging in the journal European Intellectual Property Review. The paper was entitled 'Trade marks without a brand: the proposals on "plain packaging" of tobacco products'.[7]

The paper cites other tobacco industry legal reports: Daniel Gervais’ report for Japan Tobacco International [8] and Lalive’s report for PMI.[9] It was also critical of Andrew Mitchell and Tania Voon’s work on plain packaging which favours the public health case supportive of the policy.[10]

Johnson’s paper concluded that plain packaging was likely to “offend international laws”: specifically TRIPS[3] and Paris[4] and went on to suggest that a plain packaging law for cigarettes would have wider ramifications for trademark law:

“The outcome of the debate, however, will extend far beyond the tobacco industry as it will lead to authoritative interpretations of numerous provisions in intellectual property treaties; accordingly, what is decided my fundamentally affect the future of trade mark law."

Image 2: Plain Speaking, Bird & Bird ITMA Review Cover Story, Dec 2011-Jan 2012
Image 3: Pack Attack, Bird & Bird article on plain packaging in ITMA Review, March-April 2013

The paper included a statement regarding PMI’s connection with the underlying work:

“This paper is based on research conducted by the author together with Bird and Bird LLP on behalf of Philip Morris International in relation to potential plain packaging law proposals. However, no payment was received for writing this article and the views reflected herein are those of the author and not necessarily those of Philip Morris International.”

Bird & Bird Partner Publishes Opinion Pieces on Plain Packs

At the end of 2011, Katharine Stephens, Partner at Bird & Bird LLP, published an article in ITMA Review: The Journal of the Institute of Trademark Attorneys (ITMA). (Image 2)[11] Stephens, who acknowledges the preceding work for PMI[2] concludes that:

“…if the UK Government were to propose plain packaging for cigarettes, there would be a very considerable fight over the trade mark aspects of such proposals. The tobacco companies’ position would be that the imposition of plain packaging measures would put the UK in breach of its international obligations; their arguments would appear to be compelling.”

As well as arguing the tobacco industry were likely to win on plain packs, the article also raised the familiar industry spectre of the ‘slippery slope’:

“However, I will allow myself one question of a general nature: if cigarettes are today’s target, what will be tomorrow’s? Will another Government want to bring in a similar measure to ban the use of trade marks on alcoholic drinks or fatty foods?”

In Spring 2013, Stephens published a second article in ITMA Review. (Image 3)[12] This article also took the view that, despite the defeat of the tobacco industry in an Australian Court, plain packaging was unlikely to be successful in the UK. Again, the article acknowledged previous work for PMI:

“While this article is based on research conducted for Philip Morris International, the opinions expressed are the author’s own.”

ITMA (since 2016 renamed as CITMA – The Chartered Institute of Trade Mark Attorneys) were mentioned in PMI’s leaked anti-plain packaging “Action Plan” as a way to engage with the Intellectual Property Office on plain packs. ITMA were also identified by PMI as media messengers.

Countering the Rights Argument

The positive rights argument has been disputed by other legal experts, including Andrew Mitchell,[13] and Mark Davison.[14][15][16][17]

The rights argument was ultimately rejected by the Australian High Court,[18] the UK High Court[19] and the UK Court of Appeal,[20] who agreed with the UK Government that trade marks only confer negative rights – meaning that owners merely have the right to prevent others from using them: “In my judgment the Regulations amount to a control of use, not an expropriation of property.” [21]

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Notes

  1. Bird & Bird, Bird & Bird website, accessed December 2016
  2. 2.0 2.1 2.2 2.3 Bird & Bird LLP, Why plain packaging would violate the United Kingdom’s international obligations under trademark law, September 2011
  3. 3.0 3.1 World Trade Organization, Overview: The TRIPS Agreement, accessed December 2016
  4. 4.0 4.1 World Intellectual Property Organization, Paris Convention for the Protection of Industrial Property, accessed December 2016
  5. Philip Morris International, Meeting Follow Up – 21 June 2012 – Email 1, 25 June 2012, released under Freedom of Information by the Intellectual Property Office
  6. Intellectual Property Office, Meeting Follow Up – 21 June 2012 – Email 1, 3 July 2012, released under Freedom of Information by the Intellectual Property Office
  7. P. Johnson, 'Trade marks without a brand: the proposals on "plain packaging" of tobacco products, European Intellectual Property Review 2012, 34(7):461-470
  8. D. Gervais, Analysis of the compatibility of certain tobacco product packaging rules with the TRIPS Agreement and the Paris Convention, November 2010, accessed June 2016
  9. Lalive, Why Plain Packaging is in Violation of WTO Members’ International Obligations under TRIPS and the Paris Convention, July 2009, accessed June 2016
  10. A Mitchell, T Voon, Implications of WTO Law for Plain Packaging of Tobacco Products, Melbourne Legal Studies Research Paper No. 554, June 2011, accessed December 2016
  11. K. Stephens, Bird & Bird, Plain speaking, ITMA Review, December 2011/January 2012, paywall
  12. K Stephens, Pack Attack, ITMA Review, March/April 2013
  13. L, Mezrani, Tobacco challenges unlikely to succeed, Lawyers Weekly, 17 August 2012, accessed October 2012
  14. M. Davison, Banning tobacco logos: A look at the issues, Research Institute of Australia, 2010, accessed August 2012
  15. Cancer Council Victoria, Plain packaging of tobacco products: A review of the evidence, 2011, accessed July 2012
  16. N. Berkovic Legal experts back Canberra, The Australian, 30 April 2012, accessed August 2012
  17. M. Davison, Plain packaging of cigarettes: Would it be lawful?, Australian Intellectual Property Law Bulletin, 23(5), 105-8
  18. Philip Morris Limited, Philip Morris Limited comments on Australian High Court decision on plain packaging for tobacco products, 15 August 2012, accessed August 2012
  19. ASH, Standardised Tobacco Packaging, May 2016, accessed July 2016
  20. ASH Tobacco industry appeal against standard packs law rejected, 30 November 2016, accessed December 2016
  21. Lord Justice Green, BAT and others vs. Department of Health, UK High Court, 19 May 2016, accessed December 2016