B. THE CONSTITUTIONAL CHALLENGES
3. Dissenting Opinion
The only member of the High Court who dissented the majority decision took a more expansive approach towards the effects of plain packaging on IP rights within the context of Section 51 (xxxi)135. With regards to acquisition, citing a number of High Court
133 High Court Judgement, Hayne and Bell JJ, para. 169
134 See Voon T.: Acquisition of Intellectual Property Rights: Australia’s Plain Tobacco Packaging Dispute, European Intellectual Property Review, 2013, vol. 2, pp. 113-118, (Acquisition of IPRs), at p. 5.
135 Ricketson S.: Plain Packaging Legislation for Tobacco Products and Trade Marks in the High Court of
52 authorities supporting his views, he opined that it is not required for the State or some other person to obtain an interest in property for the purposes of Section 51 (xxxi). In his words, “some identifiable benefit or advantage relating to the ownership or use of property” should be sufficient for the Section to apply136. As per this broad interpretation, he held that the State has acquired benefits from the use of intellectual property rights owned by tobacco companies. Such benefits were acquired through depriving right holders from having the control on the appearance of their products and their packaging.
Furthermore, enlargement of mandatory health warnings thanks to the vacant portions of tobacco packaging as per the TPP measures also constituted acquisition of benefits according to Justice Heydon137. In light of these findings, he proposed that the TPP Act had taken an “identifiable and measurable advantage” with regards to the proprietorship of property and conferred it on the Commonwealth, therefore constituting an acquisition.
Some of the findings contained in the Justice Heydon’s dissenting opinion are particularly noteworthy with regards to plain packaging’s compatibility with trademark rights. One of the important grounds for his conclusion is his characterization of the IP rights effected by plain packaging. In fact, whether trademarks confer their owners a right to use them has been the most controversial issue that emerged with Australia’s adoption of plain packaging. The predominant opinion of the commentators with regards to this issue has been that trademarks only confer negative rights, i.e. to exclude other parties from using them138. What makes the adverse argument that trademarks confer a positive
Australia, Queen Mary Journal of Intellectual Property 3(3), pp. 224-240, at p. 234.
136 High Court Judgement, Heydon J, para. 200.
137 High Court Judgement, Heydon J, paras. 217-219.
138 See e.g. Davison M./Emerton P.: Rights, Privileges, Legitimate Interests, and Justifiability: Article 20
53 right to use plausible in the case of Australia is that under a provision entitled “Rights given by registration of trade mark” in the “Australian Trade Marks Act 1995”, it is provided that a trademark owner acquires the “exclusive right to use the trademark” once the trademark is registered139. In fact, according to Evans and Bosland who scrutinized the TPP measures consistency with Australian Constitution, the Australian legislation confers both negative rights and positive rights at the same time140. In spite of the wording of the mentioned provision that implies an inherent “right to use”, the majority of the Court interpreted the right granted by this provision as a negative right to exclude other parties, rather than a positive right to use it in person141. Justice Heydon did not agree with this interpretation and proposed that the relevant Australian legislation also gave positive rights to use, rather than a mere negative right to exclude others142. He stated
of TRIPS and Plain Packaging of Tobacco, American University International Law Review 29(3), 2014, pp. 505-580; Bonadio E.: On The Nature of Trademark Rights: Does Trademark Registration Confer Positive or Negative Rights?, City Law School Research Paper No. 2017/01, London, UK; Correa C.M.: Is the Right to Use Trademarks Mandated by the TRIPS Agreement?, South Centre Research Paper 72, 2016.
139 Trade Marks Act 1995, Section 20 is as follows:
“(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.”
140 Evans S./Bosland J.: Plain Packaging of Cigarettes and Constitutional Property Rights, In Mitchell A./
Voon T./Liberman J. (eds), Public Health and Plain Packaging of Cigarettes, UK 2012, pp. 48-80, at pp.
52-56.
141 See eg. High Court Judgement, French J, para. 36; Crennan J, para. 248.
142 High Court Judgement, Heydon J., para. 208.
54 that: “a right to exclude others from use is not of value unless the owner of the right can engage in use143.” In that vein, in addition to the recognition of property rights as affected by the plain packaging, he also recognized the “right to use” conferred to trademark owners.
On the other hand, Justice Heydon’s conclusions set against some of the main provisions of the TPP Act that were aimed to ensure that the Act does not completely remove the IP rights of tobacco companies. For instance, against the argument that the use of trademarks were not entirely forbidden, he stresses the fact that plain packaging removes the most significant use of them, which is the “connection with retail customers as they purchase and use tobacco products144”. According to Justice Heydon, leaving the formal ownership of the property rights in the proprietors and not depriving them of their proprietorship are not important in the face of depriving them of everything that made those properties worth having in the first place, which are to have control on the use of those rights and to reap benefits through such control145.
143 Ibid.
144 High Court Judgement, Heydon J, para. 214.
145 High Court Judgement, Heydon J, para. 216.
55