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ASEAN Economic Community (AEC)

A New Market for IP Monetization

Alan Adcock

October 14, 2014

Regulatory Impingement of IP Rights

Regulatory impingement of IP rights

Acts by non-IP regulatory agencies which limit or preclude full

exploitation or enjoyment of legitimately granted IP rights  

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Cosmetics

There are a number of examples of trademarks, words or slogans which the Thai Food and Drug Administration (FDA) will not allow to be used in connection with cosmetic products unless prior approval is obtained. For example, words such as BIO, NANO or 24K GOLD, would not be permitted, even if these are registered trademarks, unless it can be proven that there are such acceptable ingredients in the cosmetic product’s formula.  

Industry Example of Regulatory impingement

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Food products

Health claims such as words or slogans relating to benefits, efficacies or functions of a food product are forbidden in Thailand. Product names which include the words “slim,” “lean,” “white,” and “boost,” among others, are not acceptable, even if these are the business’ registered trademarks.  

Industry Example of Regulatory impingement

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 Medical Devices There are many trademarks, words and slogans which are specifically prohibited from being used on medical devices in Thailand. These include words such as “excellent,” “special,” “the best,” “completely cured,” “holy,” “marvelous,” “safe,” “number one,” “no adverse effects,” “superior,” “most appropriate,” and many others.

Condoms, for example, cannot use terms like “super,” “wonderful,” “quality,” etc. Such terms might be acceptable as part of their registered trademarks, but they will not be allowed to be used on packaging or marketing materials.  

Industry Example of Regulatory impingement

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Pediatric Nutrition The FDA holds meetings to approve any product names. Here again, a business’ registered trademark, granted by the DIP and likely used in many countries, would not assist in overcoming a rejection from the FDA.

Industry Example of Regulatory impingement

Tobacco Products

• Tobacco products are not allowed to be advertised or marketed in Thailand

• MOPH’s current draft Tobacco Consumption Control Act may further prevent tobacco companies, retailers, distributors and others from additional activities essential to any business such as:

(i) providing price discounts as a part of advertising and promotion, (ii) displaying prices for products, (iii) extending their trademarks on to other goods and services, and (iv) deciding themselves on how to design their product packaging - a Committee which may not include tobacco representatives will

decide on packaging – “Plain Packaging”

Industry Example of Regulatory impingement

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Plain PackagingAn introduction

1990s“a reasonable step in the overall strategy to reduce

tobacco consumption”

Plain packaging vs Standardized packaging8

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Plain PackagingAustralia

The Australian story

Impact of standardized packaging in the tobacco industry

The international reaction to Australia

Where the future might lead

Tobacco PlainPackaging Act 2011 gains Royal Assent

Claims filed in High Court of Australia

Draft legislation for consultation released

Intention to bring standardized packaging legislation announced

Senator Fielding’s Plain Tobacco Packaging Bill

AustraliaThe legislation and how it came to pass

2009 April 2010

April 2011

Dec2011

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Anti-competitive (ossify the

market)

Depress Prices Increase in youth smoking

Lead to a significant increase in counterfeits

Impact of legislationHow Standardized Packaging will affect trade

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Claims

Ukraine

Honduras

Dominican Republic Cuba Indonesia

Commenced claim under the Australia / Hong Kong Bilateral Investment Treaty

International reactionOngoing legal challenges to Australia

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In favour of PP

Countries’ PositionsDiscussions in WTO Committees

Neutral Position

Chile Columbia

CubaDominican Republic

El Salvador Honduras Indonesia

JordanMexico

Nicaragua Nigeria

Philippines Ukraine Zambia

Zimbabwe Russia

ChinaEU

Hong Kong Japan

Switzerland Turkey

Australia Brazil

CanadaNew Zealand

Norway Uruguay+ WHO

Plain Packaging

In favor of Plain Packaging

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International reactionThe TRIPS arguments

Article 20 imposes an obligation to refrain from imposing special requirements which: (i) encumber the use of trademarks in the course of trade; and(ii) do so unjustifiably

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Relevance of the WTO

Different legal barriers in different countries

Broad base of opposition

The future“Domino” Effect?

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The future“Domino” Effect?

Broad base of opposition

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The future

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The future

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The future

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Plain Packaging Update 2014

Ireland has become the first in EU to introduce plain packaging regulations for cigarettes by approving its Public Health (Standardized Packaging of Tobacco) Bill 2014

Following the UK, the French Health Minister announced last month that a draft bill will be introduced in six months

South Africa set to introduce plain packaging by 2015

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Fast Food Consumers International and the World Obesity

Federation call for the adoption of more stringent rules

Recommendations for a

Global Convention to protect

and promote healthy diets includes

increased taxation, advertising

controls, labeling/packaging, health

warnings/graphical warnings etc

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Infant Nutritional Supplements

In South Africa, 2-6 of Regulations R991 will come into effect from 6 December 2014 which will prohibit displaying pictures of infants, distribution of educational material and marketing material

Intent is to prevent aggressive

advertising and reliance on

infant milk supplements

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Sugary drinks

UK to consider special tax

on sugary drinks due to

adverse effects on health

California legislature rejects Bill to have health

warning labels on sugary drinks 23

• Sugary drinks to be treated as unhealthy• Debate ongoing for plain packaging

Disclosure of drug trial data

European Medicines Agency (EMA) has adopted a new policy on disclosing clinical trial data and is set to go into effect on 1st Jan 2015

Ambiguity in the terms of the policy has led to an ongoing debate that the policy will impinge on commercially valuable trade secrets

AbbVie last year went to court to block the EMA from releasing data for specific drugs but reached a compromise to consider part of the disclosure material viable for public access

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