Tobacco Companies Using Trademark Claims To Try To Avoid Putting Warning Labels On Cigarrettes & Cigars

from the your-health-is-less-important-than-someone's-trademark dept

Fri, Jan 7th 2011 8:53am — Mike Masnick

A bunch of folks sent in this bizarre trademark lawsuit in Australia, where tobacco giant British American Tobacco is suing Australian importer Trojan for trademark infringement. Where it gets bizarre is in what BAT claims is infringing on its trademark: it's claiming that since the mandatory health warning placed on cigar packages covers part of BAT's logo, it's trademark infringement. Think about that for a second. One of the readers who sent this in, Bruce, points us to a little bit of background as well. Apparently, Australia has a new rule coming into effect that says all such products must soon be offered in plain packages -- and some lobbyists in support of the tobacco companies have been claiming that plain packages violate trademark, and go against Australia's treaty obligations -- including its free trade agreement with the US. For years, we've noted that when lobbyists break out the "international obligations" claim, you know that they're really full of it, but this seems especially ridiculous. It's difficult to see how this is anything more than a massive twisting of trademark law.

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Filed Under: australia, cigarettes, cigars, trademark
Companies: british american tobacco

45 Comments

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The eejit (profile), 7 Jan 2011 @ 8:10am

Then the 'criminal' Aussies should just steal a boat and terrorise Congress and the USTR.

Problem solved.
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Anonymous Coward, 7 Jan 2011 @ 8:59am

Assuming for purposes of argument that this situation was taking place in the US, would you have any doubt of the legality of such a governmentat edict?
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Jeremy Lyman (profile), 7 Jan 2011 @ 9:09am

philosophy department
Mind if we call you "Bruce" to keep it clear?
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Anonymous Coward, 7 Jan 2011 @ 9:40am

Tobacco companies actually have a right to be pretty upset. Either the governments should rule their product dangerous and regulate as they regulate prescription drugs, or they should leave them alone. If smoking cigarettes or chewing tobacco can kill you, then they should just regulate it as a dangerous substance.

This middle ground is stupid, and leads the company lawyers to have to come up with pretty weird defenses to try to defeat the rules.
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Chronno S. Trigger (profile), 7 Jan 2011 @ 9:43am

Re:
I'm with you. One way or another, not both.
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Marcus Carab (profile), 7 Jan 2011 @ 9:43am

Re:
I tend to agree. Tobacco regulation is a good idea in principle, but when you have a situation where companies are forced to advertise against themselves on their own product packaging, it seems a little stupid. And it also encourages these companies to find backdoor ways of advertising and getting their name out there.
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Sean T Henry (profile), 7 Jan 2011 @ 9:48am

Re:
The Aussies will just have to pirate the cigarettes, it is possible now that there are "electronic" cigarettes. The downside is a CIAA will be created to sue those who download there smokes.
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Sychodelix (profile), 7 Jan 2011 @ 9:51am

Logo obfuscation
Nobody likes the tobacco industry. This still doesn't change the fact that Australia has no right to have part of their logo blocked out by the big honking warnings all over them and it is changing the way the logo looks. Therefore, you could consider it real trademark infringement.
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someone (profile), 7 Jan 2011 @ 9:59am

People do not care about warning labels
As Denis Leary once said: "You could have cigarettes that come in a black pack, with a skull and a cross bone on the front, called tumors and smokers would be lined up around the block going, "I can't wait to get my hands on these f%$^&*& things! I bet you get a tumor as soon as you light up!"

People ignore the warning on their SVU that it may tip over if turning too fast.
People ignore the warning on their toaster to keep it away from the sink.
People ignore the warning on their hair spray to keep away from flames.
People will ignore the warning on the cigarette packs too.

These warning label laws sound good on paper.
But in practice do not result in changing people's behaviour.

So why do we waste time and money making such ineffective laws?
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nuidnessnya_b, 7 Jan 2011 @ 10:03am

Re: People do not care about warning labels
To cover their ass if someone gets hurt, they can say I told you so.
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dude ranch, 7 Jan 2011 @ 10:05am

Re: Logo obfuscation
I love the tobacco industry
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Chronno S. Trigger (profile), 7 Jan 2011 @ 10:18am

Re: Re: People do not care about warning labels
If that was the case then the packs wouldn't need more warnings on them, they would already be there.

At this point if someone doesn't know that cigarettes impose a health risk, they'll probably get a Darwin award before smoking kills them.
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Ron Rezendes (profile), 7 Jan 2011 @ 10:23am

Re: Re: People do not care about warning labels
When in reality the government and tobacco companies should be held liable for all illness caused by their product since they are already known to be dangerous when used as instructed.

It's hard to think of another product that can actually kill you, even if used in moderation, that is legal to sell to the public and all that is required to avoid responsibility is a warning on the package basically saying "the product within this package can and may kill you, even if used in moderation."
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Jon (profile), 7 Jan 2011 @ 10:42am

I have to lean the other way on this one. Sure, the application of trademark law is wrong, and that part of the article I agree with. But using trademark law in order to push back on an overly oppressive government... I'm okay with in an ends justify the means sort of way.

Any grown adult knows tobacco is bad for you these days. Over regulating and forcing companies to carry super-sized warning labels and change their packaging is just as bad. And if there's something that has been pointed out time and time again on TechDirt, it's that you can't legislate behavior.

Personally, I'm offended any time I hear that the U.S. government is pissing away time and money on tobacco company issues. I'm not saying that the industry shouldn't be regulated at all, but quit wasting my tax dollars on it. There are so many bigger problems to tackle. People VOLUNTARILY purchasing and consuming cigarettes knowing full well that they regularly cause harm DOES NOT CONCERN ME.

No more changes to labeling requirements. No more marketing restrictions. Let the companies operate like any other company. And let the people decide what they're going to do - because they will regardless of all this wasted time and legislation.
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DS, 7 Jan 2011 @ 10:43am

"from the your-health-is-less-important-than-someone's-trademark dept"

Ah yes, because nobody realized that smoking was dangerous until they put warning labels on it...
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Jon (profile), 7 Jan 2011 @ 10:49am

Re: Re: Re: People do not care about warning labels
Why does it matter that the product is effectively dangerous? People want it. People voluntarily consume it. There are perceived benefits, so the product isn't entirely without merit.

Let people use products and substances as they choose (so long as they aren't hurting others). Stop trying to force people to follow the ideal that smoking is bad. People don't care, they just want to smoke.

And no, the tobacco companies should absolutely not be held liable. They didn't force you to consume their products, and currently, it's practically impossible to claim that you didn't know they would hurt you. I don't care if they're used as directed or not.

Warning: Using a car as directed may result in a lethal traffic collision. Do we hold auto manufacturers liable? No. We know and understand the risks by choosing to purchase and operate a car.
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Richard (profile), 7 Jan 2011 @ 11:19am

Re: Re:
I disagree strongly with you - the current situation has some problems - but it is infinitely better than either of the alternatives - total lack of regulation - and back to the heart attack and cancer rates of the 60's or prohibition with all the problems currently associated with "the war on" illegal drugs.
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Hulser (profile), 7 Jan 2011 @ 11:30am

Problem solved
Well, since the primary purpose of both trademark and warning labels is consumer protection, then if you had to choose which is more important - because of space limitations, for example -- it would obviously be warning labels. The only way that there is any kind of real conflict is if you view trademark as some kind of property instead of a means of protecting the consumer. But no one things that, right?
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Anonymous Coward, 7 Jan 2011 @ 11:34am

Shrink the logo
If the problem is covering part of the logo, it is easy: just shrink it so it fits in the part not covered.
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Chronno S. Trigger (profile), 7 Jan 2011 @ 11:36am

Re: Re: Re:
Smoking is becoming taboo in our culture. Not because of some text on the box, but because of real scientific data that has come up (and a lot of really vocal assholes). Removing the labels, removing the taxes, removing the "you can't smoke here" laws is not going to change that. Once something becomes entwined in our moral fiber, it becomes stronger then any law.
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The Mighty Buzzard (profile), 7 Jan 2011 @ 11:40am

Re: Re:
They don't need to advertise. If people want to smoke, they almost certainly either know what brand of tobacco they want or they want whatever is cheapest.

But that's neither here nor there. Everyone on the bloody planet knows that smoking is bad for them and has fair odds of killing them sooner than they would have otherwise died. Those of us who still prefer to partake of it anyway obviously do not care, so this is just anti-tobacco lobbyists thumbing their collective noses at the tobacco companies.
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The Mighty Buzzard (profile), 7 Jan 2011 @ 11:50am

Re: Re: Re: Re:
More or less true but you really have to be careful how you parse even the scientific data. Anti-smoking advocates will twist numbers as bad as any politician.

Example, lately I've seen some commercial claiming X million people die every year of smoking-related diseases. True but not remotely honest. Yes the diseases are smoking-related diseases but they don't bother to tell you how many people who died of those diseases smoked. They just include them all.
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The Mighty Buzzard (profile), 7 Jan 2011 @ 11:53am

Re: Re: People do not care about warning labels
No, it's just the lung nazis thumbing their noses at the tobacco companies. Everyone already knows smoking is bad for you, so the labels serve no purpose other than spite.
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Anonymous Coward, 7 Jan 2011 @ 11:55am

Re: Re: Re: Re: People do not care about warning labels
That would be fine and dandy if it didn't hurt others. But it does. Second-hand smoke is dangerous. They take up hospital beds and cost money when they get sick etc. The costs to society are numerous. You CAN'T let people smoke without it negatively affecting those who don't. It isn't possible regardless of how it might be regulated, either. It's an impossible situation... :(
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Anonymous Coward, 7 Jan 2011 @ 11:56am

Re: Shrink the logo
Are you referring to shrinking the logo or the warning?
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The Mighty Buzzard (profile), 7 Jan 2011 @ 11:57am

Re: Re: Re: People do not care about warning labels
Wait, "when used as instructed"? Thanks, that just gave me some hilarious mental images of cigarettes being used incorrectly.
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dcl, 7 Jan 2011 @ 11:59am

Re: Re: Re: Re: People do not care about warning labels
I agree cars are used at your own risk... but also keep in mind:

- the ability to use that car on public streets is heavily regulated (where, when, how fast). Sort of like where you can or can't smoke.

- The car industry is heavily regulated, unlike the Tobacco co's who can add almost anything they like to cigs (is there really that much tar in raw tobacco leaves?)

- Car Manufacturers have been held liable for damages if they purposely compromise safety features.

- Car Manufacturers have to contend with public safety continuousness. I haven't see the equivalent of crash test ratings for cigs.

There are lots of things that are regulated. Although I see their right to fight the regulation, TM is not the right venue. Ultimately if they don't want to abide by those rules then they don't have to sell there and somebody else will.
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ChrisB (profile), 7 Jan 2011 @ 12:00pm

Re: Re: Re: People do not care about warning labels
> It's hard to think of another product that can actually
> kill you, even if used in moderation

Tobacco will _not_ kill you if used in moderation. The lethality of all poisons is in the dosage. If someone smoke a few cigarrettes a day, they would die of old age before dying of cancer.
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The Mighty Buzzard (profile), 7 Jan 2011 @ 12:02pm

Re: Re: Re: Re: Re: People do not care about warning labels
Yes, and people exercising their free speech rights causes me huge amounts of stress every year which will also shorten my life. You've just taken a day off easily with that asinine statement.
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The Mighty Buzzard (profile), 7 Jan 2011 @ 12:05pm

Re: Re: Re: Re: People do not care about warning labels
Unless they were already going to die of cancer. But of course if they've had even one cigarette it will be blamed entirely on smoking.
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dcl, 7 Jan 2011 @ 12:16pm

Re: Re: Re: Re: People do not care about warning labels
I coughed so long and hard when I took my first drag that it almost killed me (the cig burned it self out before I was done)... in fact it may have killed me... that would explain why nobody ever notices me...
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Mark, 7 Jan 2011 @ 12:31pm

The warning label is required to be there by law.

The tobacco companies can easily move their trademark elsewhere on the package where it will not be covered and the problem will be resolved.

Meanwhile, suing somebody for doing something wrong when the only legal means for them to avoid doing so was to disobey the law could well be considered a form of entrapment, or at the very least enticement to disobey the law, and I would rather hope that the judge slams a rather large fine on the tobacco company simply for attempting to pull this stunt.
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Anonymous Coward, 7 Jan 2011 @ 12:33pm

The warnings do not discourage purchase. They sure as hell don't stop me from buying mine.

And all the restrictions as to selling on one allocated counter are probably pissing off the shops way more than pissing off the buyers. And yeah, thats how it is in oz if it's not like that in your country.

I want off this frickin smouldering island, I wanna relocate to holland ASAP.
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Anonymous Coward, 7 Jan 2011 @ 12:48pm

leave us smokers alone. if someone is that stupid not to know by now that smoking can be a danger they are the idiot
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Ron Rezendes (profile), 7 Jan 2011 @ 1:11pm

Re: Re: Re: Re: People do not care about warning labels
A lethal traffic collision is not the intended use of said vehicle - that collision is an "accident" and an unintentional event, you've missed the point by at least a mile here.

"Let people use products and substances as they choose (so long as they aren't hurting others)."

I totally agree with this point! Legalize it all and tax it. Marijuana growers are closest to actually seeing this happen but poppy growers, and others (currently) illegal substance manufacturers will never see this happen in their lifetime. But our government will spend billions fighting the "War on Drugs" which should be titled the "War on drugs we don't like and subsidize!"

My major issue here is the selectiveness of Congress to decide what we can and cannot subject ourselves to - which they've decided in some back room and resulted in subsidies going to tobacco farmers because heaven forbid the farmers can't adapt to the new changing markets where tobacco consumption is actually falling.

Hey farmer - that same dirt WILL grow other crops!!

Does the RIAA work for the tobacco farmers too?
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Ron Rezendes (profile), 7 Jan 2011 @ 1:39pm

Re: Re: Re: Re: People do not care about warning labels
You're welcome! Actually had Monica Lewinsky in mind when I wrote that and since cigarettes are just small cigars it seemed to work for me!
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Ron Rezendes (profile), 7 Jan 2011 @ 2:55pm

Re: Re: Re: Re: People do not care about warning labels
I knew a number of people personally who did die as a result of smoking in moderation - I'll completely disagree with you here. You are leaving out the part of the equation that includes the people who are prone to cancer based on genetics (runs in the family).

Personally I know the dangers as well and I still do it despite these facts. The labels are meaningless really.

However, should tobacco even be legal while other less dangerous substances are not?

My preference is to legalize everything and let nature take its course.
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bdhoro (profile), 7 Jan 2011 @ 7:11pm

Angles
This being a copyright issue is all about angles.

It is very easy to be against the tobacco companies, yet there are still a few areas where they can push back and not seem like "bad" companies and actually have the public backing them up.

They don't care if there's really a claim, as long as a few people will say "hey I think that company is right," they're satisfied.
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G Thompson (profile), 7 Jan 2011 @ 7:28pm

Re:
Absolutely mark, and that is Trojans major defense platform in a nutshell.

Warning labels on cigarettes are mandatory by law.With criminal sanctions (not civil) against companies who breach them.

BAT know this absolutely, the same as does Phillip Morris (another company trying the same tactics).

In Australia advertising of any form whatsoever (other than on their own product packaging) for tobacco products has been illegal (criminal) for over 10yrs.

Tobacco companies are not allowed to sponsor either.

Tobacco products have to be sold behind partitions that cannot be seen from the street and cannot be sold to anyone under the age of 16 (18 some places)

It is offence to smoke tobacco products in public indoor spaces, government buildings, or in places of work (OH&S issue) [Yes private companies have a duty to provide a smoke free workplace now]

It is an offence for an adult to smoke tobacco products in any vehicle with a child under the age of 14yrs old as well.

Soon Tobacco products (cigarettes, cigars, loose-leaf etc) will have to by federal law only be available in plain white packages with the companies name and product name in a specific placement with same typeface across the board (all products) no matter what. There is NO trademark dispute then since the Government is not mandating that the logo or trademark be changed.. they are mandating that it cannot be shown therefore the actual trademark cannot be in dispute since the trademark is not able to actually be shown. No treaty has been broken since there has been no breach of trademark acts (no diluting, passing off etc etc etc)

Has any of these methods worked in cutting down tobacco usage within Australia?

Actually we have seen the people who smoke go down significantly in numbers over the last twenty years though some of this can be contributed to the common sense notion that anyone who doesn't live in a cave knows that tobacco products (those filled with chemicals by the tobacco companies anyway) are bad for you.

Why doesn't the Australian Government ban the sale of tobacco outright though?

Thats easy.. MONEY! A packet of 25 cigarettes here is worth around $10 - $12 with over 60% of that going in Tax to the Federal govt. (Oh and yes thats another way we have stopped people indulging.. make it EXPENSIVE) Think of the money they would loose.. Yes like all govt's everywhere, ours is hypocritical too ;(
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Anonymous Coward, 8 Jan 2011 @ 2:41am

Re: Re: Re: Re: Re: People do not care about warning labels
Deaths cannot be definitively blamed on tobacco. ANY tobacco use will be automatically blamed for any death without any further proof necessary. This is NOT 'definitive' to anyone who is honest about it.
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Anonymous a-hole, 8 Jan 2011 @ 7:15am

Re:
leave us smokers alone.

As soon as I can find a way to not breathe the toxic clouds at the entrance to the building, sure.

Look, you want to smoke, fine. I really don't give a shit if you want to inhale carcinogens until you grow a third arm and look like the Toxic Avenger. I very much mind my having to inhale the same carcinogens against my will.
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TechNoFear (profile), 8 Jan 2011 @ 8:24pm

The pack can't be displayed in a shop so the logo won't be seen until after purchase....
Read the first report, this is a tabbacco company suing the local distributor of their product for putting legally required stickers on packs (imported into Australia).

Why don't they just reprint the pack so the logo is not covered? (they have had 5 years to do so)

Is putting a label with the percentage of each ingredients and RDI on the pack also trademark infringement?

What about labels for localised promotional competitions?

How about warnings that the product may contain nuts, dairy or other ingredients you may be allergic too?

What about a pharmacy/doctor that puts stickers (with dose, patient etc) over the brand on medicine bottles?

Tabacco is a restricted product in Australia (selling tabacco to a under 18's is a very large fine) and can not even be diplayed in shops. So only after purchase will the logo be seen.

For decades there has been no tabacco advertising allowed on TV.
For 5 years the 100% of the back panel and 25% of the front of all tabacco products has been a graphic warning.
For the last year tabacco products can not be displayed in shops (hidden inside cabinets).
Recently cigarettes had to meet fire hazard standards (must self extinguish).
Soon all the packs will have to be blank, except for the warning.

Clearly the tabacco industry knows this will harm their business and are fighting back (by trying to set an obtuse legal precident).

BTW a pack of 25 costs US$15 - US$20 in Australia, due to massive taxes.

Why?

Because Australia has full public health care, paid for by the Australian tax-payers (and 1/4 of all Australian tabacco users need expensive health care at some point).
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bretthotep (profile), 9 Jan 2011 @ 8:11pm

Re: The pack can't be displayed in a shop so the logo won't be seen until after purchase....
This is how it should be too. No need to ban it, just make it expensive by taxing the sh!t out of it and use the funds received for smokers health care requirements.
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Anonymous Coward, 10 Jan 2011 @ 5:03am

Re: Re:
I know. Whenever I have to walk through a crowd of smokers I light up a cigarette and inhale some healthy primary smoke to protect me from that nasty secondary smoke that kills people.

I don't mind the regular city smog, dust, smoke and pollution at all. I can breathe that all day and if it affects me, who cares, not me!! But I feel a little tired today and I remember that 2 days ago a smoker walked past me. Coincidence?
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Niall (profile), 13 Apr 2011 @ 7:08am

Re: Re: Re: Re: Re:
Actually, that is incorrect. "Dying of smoking-related diseases" does NOT mean "killed by diseases that kill smokers". It means "killed by a disease brought on or generally made (much) worse by smoking". So no, it's not what you think it is.
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