International Trademark Association

The International Trademark Association (INTA), which is headquartered in New York, is a global association that promotes and protects the rights of trademark owners.¹
INTA’s 2017 annual report states that it works to “counter legislative initiatives on brand restrictions”, including large health warnings and plain packaging for tobacco and alcohol products.² INTA mostly does this by making critical media statements and submissions to government consultations.

Relationship with the Tobacco Industry

Tobacco Membership Fees

INTA is funded through membership fees. Corporate members include British American Tobacco (BAT), Philip Morris International (PMI), Imperial Tobacco, Japan Tobacco International (JTI) and Altria.³⁴

Tobacco Company Representation on INTA Board

Tobacco company representatives have held various INTA leadership positions.
2018/19: PMI’s Assistant General Counsel Trademarks Copyright and Designs, Barry Gerber, served on INTA’s Board of Directors.⁵
2017: JTI’s Ronald van Tuijl was INTA’s ‘Immediate Past President and Ex-Officio’.⁶
2016: Van Tuijl served as INTA President.⁷
2015: Van Tuijl was President Elect.⁸
2014: Van Tuijl served as Secretary.⁹
2013: BAT’s Toe Su Aung was INTA President and Chair of the Board, and JTI’s van Tuijl was on the Board of Directors.¹⁰
2012: Aung was President Elect, and Van Tuijl sat on the Board.¹¹
2011: Aung served as Vice President.¹²

Countering Tobacco Control Measures: Plain Packaging

INTA has a history of working against tobacco plain packaging, without disclosing its tobacco industry membership.

Singapore

On 31 October 2018, Singapore’s Ministry of Health announced that Singapore would introduce plain packaging with enlarged health warnings on all tobacco products.¹³ Weeks later, INTA issued a media statement that tried to shift the policy debate away from health to economics, urging the Singapore government to take a “well-informed and balanced approach to this issue” by considering “the contribution of intellectual property (IP) to economic growth”.¹⁴
INTA stated that “research published by INTA” (no details provided) showed that “trademark intensive industries” contribute to 50% of Singapore’s GDP, 60% of its exports, and 29% of overall employment. INTA further claimed that plain packaging would lead to the Singapore market being flooded with illicit tobacco, and urged the Singapore government to modify the proposal to focus on preventative health education instead.¹⁴
The statement ended with a short biography of INTA, stating that the association’s members included “more than 7,200 trademark owners”. It failed to mention that its membership included the major tobacco companies, whose representatives have served key roles on INTA’s Board.

Europe

INTA also opposed initial proposals by the European Commission to include plain packaging in the EU Tobacco Products Directive Revision (TPD) (2009-2014).
In December 2010 INTA told European media that “We believe that plain packaging will encroach on the rights of trademark owners and their ability to properly and lawfully use their trademarks. In addition, in our view, plain packaging would make it easier for counterfeit products to enter the market and make it more difficult for consumers to distinguish genuine from counterfeit products.”¹⁵
Plain packaging was ultimately removed from the TPD proposal, which has been labelled “the most lobbied dossier in the history of EU institutions’.¹⁶

Australia

In January 2019, INTA submitted an official briefing to the Secretariat of the World Trade Organization (WTO) Appellate Body to support the Governments of Honduras and the Dominican Republic in their appeal against the WTO ruling that upheld Australia’s plain packaging law.¹⁷ In its briefing, INTA urged the Appellate Body to consider “the highly negative effects that the TPPA Plain Packaging law could have not just within the tobacco industry, but potentially across all sectors of consumer goods”, and claimed that plain packaging erodes Intellectual Property Rights under the Paris Convention and TRIPS.¹⁷ INTA also accused the WTO Panel ruling for failing to consider the impact of plain packaging on illicit tobacco trade and further claimed that the WTO Panel incorrectly had interpreted Article 20 of TRIPS in coming to its conclusion.¹⁷
For several years INTA has been opposing Australia’s plain packaging laws.
In 2009 Australia’s National Preventative Health Taskforce examined the evidence to support the introduction of plain packaging.¹⁸ INTA submitted a letter to the Taskforce opposing the policy and arguing that it would deprive a trademark owner of the use of its personal property, who should therefore be compensated, and that the policy could give rise to an increase in illicit tobacco trade.¹⁹ No supporting evidence was given to support these claims.
INTA also provided comments to the 2010 Australian Senate Standing Committee on the draft Tobacco Plain Packaging Bill and wrote to Australia’s Assistant Secretary of Health in June 2011.²⁰²¹ On both occasions INTA argued that the plans to introduce plain packaging “represent an encroachment on the rights of trademark owners and their ability to properly and lawfully use their trademarks”. In July 2011, INTA wrote to the Australian Standing Committee on Health and Ageing:

“Although we take no position on the particular health issues that are the focus of this legislation, we strongly believe that the Tobacco Plain Packaging Bill 2011 is a serious encroachment on the rights of trademark owners and frustrates the ability of trademarks to function properly as a part of free and effective commerce.”

INTA also raised issues with respect to:

• certain provisions of the Constitution of Australia;
• an increased risk of counterfeiting;
• use requirements under Australia’s Trade Marks Act;
• the effect of the Bill on distinctiveness and registration of a trademark;
• potential treaty violations of the TRIPS Agreement and Paris Convention, which will place Australia outside the international trademark harmonization process.²²

In none of its correspondence with the Australian Government did INTA declare its relationship with the tobacco industry.

• Also see: Plain Packaging in Australia and Australia: Trademark Claims.

Canada

In the 1990s the tobacco industry was concerned that Canada would be one of the first countries to introduce plain packaging and set a world precedent.²³
On 6 April 1994, tobacco company Rothmans (later acquired by BAT) wrote to INTA on behalf of the Canadian Tobacco Manufacturers Committee (CTMC) to brief it on plain packaging developments in the Canadian House of Commons Standing Committee on Health and proposed the “possibility of the International Trade-Mark Association making a presentation or sending a brief to the Committee”.²³
Three weeks later, the Chairman of the Standing Committee received a letter from INTA that opposed the proposed plain packaging measure.²⁴ Whilst stating that the association took “no position on the public policy and health issues as they relate to the plain packaging of tobacco produce”, INTA expressed its “concerns regarding the potential impact that the plain packaging proposal for tobacco products being studied by your Committee may have on trademark owners, generally and the public at large”, and urged the Committee to reject the plain packaging proposal.²⁴

United States of America

In 1990 INTA also opposed ‘The Tobacco Control and Health Protection Act’, which was pending before the American Congress.²⁵
The legislation would have, among other things, imposed limits on the use and display of trademarks in cigarette packaging and advertising.

Countering Tobacco Control Measures: Larger Health Warnings

New Zealand

In 1995 an article in the New Zealand media reported that INTA had “come out in support of our tobacco industry” and opposed the proposals in New Zealand to increase health warnings on cigarette packets.²⁶ INTA was quoted as stating that the health measure would “unreasonably and unnecessarily curtail trademark owners’ legitimate rights”.²⁶
That same year INTA also wrote to the New Zealand Minister of Health to “express the Association’s concern regarding the proposed amendments to the New Zealand Smoke-free Environments Act of 1990”.²⁷ INTA, which identified itself as a “worldwide membership organization representing 2800 corporations’ without specifying that these included tobacco companies, argued that the proposed size of the warnings would restrict trademark owners in exercising their right to identify their goods in such a manner so as to distinguish those goods from others in the marketplace.²⁷

TobaccoTactics Resources

• European Communities Trademark Association
• Global Trademark and Intellectual Property Rights Groups
• Countering Industry Arguments against Plain Packaging
• It Breaches Intellectual Property Rights
• It will Lead to Increased Smuggling

Relevant Link

International Trademark Association website