Tobacco companies and IP rights

The commercial activities of tobacco companies ping infrequently on IP Draughts’ sonar.  When advising on transactions involving universities and cancer research charities, we are sometimes asked to draft or comment on clauses that terminate the agreement if the other party acquires any tobacco interests, or is acquired by a company with tobacco interests.  We have provided training in Lagos, Nigeria to a group of lawyers that included the in-house legal team of BAT and their external counsel (and have a set of very nice coasters, branded British American Tobacco Nigeria, to prove it).

Several, recent news items involving tobacco companies have caught our eye.  First, there is the news that Philip Morris is considering suing the Australian Government over plans to require cigarettes to be sold in plain, unbranded packaging.

These plans would seem to raise important questions over whether a company should be prevented from using its intellectual property – in this case its branding – on products that it can lawfully sell.  Might this policy be adopted by Governments in the UK or other countries?  Is there not something odd, or even hypocritical, about one branch of Government (the Trade Marks Registry) taking a tobacco company’s money to enable it to register trade marks and other IP, and another branch of Government (the Health Department) introducing laws to ban the use of that IP on products that are lawfully put on the market?  If such a ban is adopted, do principles of consistency require Governments also to prohibit registration of IP for tobacco products?

Meanwhile, we note that Philip Morris is involved in a battle with the University of Stirling over a Freedom of Information request.  It seems that the university is resisting the tobacco company’s attempts to obtain research data about the effect that plain packaging of cigarettes has on children, despite a ruling by the Information Commissioner in the company’s favour.

How it might have looked: another MoU signing ceremony

Unrelated to these news items, except in IP Draughts’ mind, is the news (issued by the UK Department of Business, Innovation and Skills on Twitter) that the UK IPO has entered into a “landmark” Memorandum of Understanding with the Nigerian Copyright Commission on “strategic cooperation on copyright”.  As BAT is one of the biggest players in the Nigerian economy, we assume that they will benefit from any improvements in copyright law, practice or enforcement that may result from the MoU.  Unfortunately, the terms of the MoU are not disclosed, but photographs of the MoU being signed are available from the BIS press office on request.

2 Comments

Filed under Legal policy

2 responses to “Tobacco companies and IP rights

  1. Norman, thanks for your comments. I think your land example works if there is some other use that can be made of the land, eg grazing for sheep. But in the case of a trade mark registered for tobacco products (and for no other products), if the law prohibits the use of the trade mark on or in relation to (all) tobacco products, is there not a direct inconsistency between the act of registering the trade mark and the act of banning use of the trade mark on the packaging of the products for which it is registered?

  2. Norman

    “If such a ban is adopted, do principles of consistency require Governments also to prohibit registration of IP for tobacco products?” No – there is no inconsistency in regulating products relating to IP. In patent law it is a basic principle is that a patent is a right to exclude, not a right to practice. Holding a patent for a new weapon, for example, does not give the patentee the right to use the weapon. The same is true of ordinary property. The fact that the government takes my money to register my title to land does not give me the right to use that land for any purpose I desire – I cannot build a poultry farm in a residential neighbourhood, for example. Some countries have a gun registry. The fact that the government take my money to register my gun does not authorize me to use that gun by, for example, hunting out of season.

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