Another conversation I had in Geneva was about the Plain Packaging case and the right to use trademarks. We've talked about this issue on this blog before. Do trademark holders have a right to use those trademarks? Or simply a right to prevent others from using a similar trademark that causes consumer confusion?
Let's stipulate for the moment that a right to use your trademark exists under the TRIPS Agreement. Just how broad would that right be? The argument by the complainants in Plain Packaging, as I understand it, is that prohibiting the use of a trademark on the product package violates that right. But presumably you can still use the trademark around your offices (on letterhead, on the building), so it's not a total prohibition on the use of the trademark. Neverthless, it does go quite far.
What about the situation where a government bans advertising for tobacco, which many countries do. In effect, such a ban means you cannot use your trademark in the way that people frequently use trademarks (to get their name out to potential customers). Its effect on trademarks is a little more indirect, but it nevertheless has an effect. So while perhaps this would not go as far as plain packaging in restricting the use of your trademark, it is a significant intrusion (I suppose you could argue that it actually goes further).
The question then becomes somewhat less black and white. It is not whether the TRIPS Agreement provides a right to use your trademark. Rather, it is the extent to which the TRIPS Agreement allows interference with the use of trademarks. What forms of interference are allowed? Is a plain packaging requirement allowed? Is an advertising ban allowed? What other measures would constitute a potential concern?
Finally, for those of you interested in situations where companies lose the ability to use their trademarks, keep an eye out for a decision in this case relating to the American sports world:
The Trademark Trial and Appeal Board will hear a petition brought by a group of Native Americans who say the [Washington] Redskins should lose their federal trademark protection. They cite a law that prohibits registered names that are disparaging, scandalous, contemptuous or disreputable.
