by Lawrence Kogan
Part 3 discusses how the Draft HK Code's prohibitions and restrictions on the use of trademarks, trade names, logos, symbols, etc. (word marks and non-word marks) in informational/educational materials about branded products and infant and young child feeding, on product containers and labels, and in general public promotional activities, including advertising, violate the WTO Trade Related Aspects of Intellectual Property Rights Agreement.
I. Introduction Part 1 of this article discusses how the various food safety-related provisions of the Hong Kong Code of Marketing and Quality of Formula Milk and Related Products, and Food Products for Infants & Young Children ("the Draft HK Code") violate the WTO Sanitary and Phytosanitary ("SPS") Agreement. In particular, it focuses on how the Government of the Hong Kong Special Administrative Region ("the GHK-SAR") has failed to substantiate with scientific evidence, on food safety grounds, the Draft HK Code's effective imposition of a 30-month marketing ban on follow-up formula and complementary food products intended for infants and young children up to 36 months of age. Part 2 of this article discusses how the various non-food-safety-related provisions of the Draft HK Code violate the WTO Technical Barriers to Trade ("TBT") Agreement. In particular, it focuses on how the Draft HK Code's 30-month marketing ban on follow-up formula and complementary food products creates unnecessary obstacles to trade. It also explains how the GHK-SAR failed to identify and consider reasonably available less trade-restrictive alternatives to such measures that are capable of achieving the Draft HK Code's legitimate non-food safety-related policy objectives with little, if any, risk they would be unfulfilled. Part 3 of this article discusses how the Draft HK Code's prohibitions and restrictions on the use of trademarks, trade names, logos, symbols, etc. (word marks and non-word marks) in informational/educational materials about branded products and infant and young child feeding, on product containers and labels, and in general public promotional activities, including advertising, violate the WTO Trade Related Aspects of Intellectual Property Rights ("TRIPS") Agreement. One of the key goals of the TRIPS Agreement, as reflected in TRIPS Articles 7 and 8, is to establish and maintain "a balance between [private] intellectual property rights and other important socio-economic public policies of WTO Member governments" -- i.e., to establish a balance between rights and obligations, both within and outside the WTO TRIPS regime. However, this narrow goal must be understood in light of the TRIPS Agreement's broader goal of "reduc[ing] distortions and impediments to international trade", which is to be achieved by balancing "the need to promote effective and adequate protection of intellectual property rights", with the need "to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade." TRIPS Article 15.1 provides that trademarks can potentially consist of "[a]ny sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings." "[S]igns, in particular words", can include "personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs." Draft HK Code Articles 4, 5 and 8 prohibit, restrict and/or prescribe the use of proprietary company trademarks, logos, and brand names on certain informational/educational materials, product containers and labels, and in general promotional activities, especially advertising. These Draft HK Code provisions arguably violate the TRIPS Agreement, specifically TRIPS Articles 8 and 20, because they disproportionately curtail the use of private trademark assets (word marks and non-word marks) associated with infant formula, follow-up formula, and young children's food ("complementary food") products in the absence of sufficient evidence demonstrating that such trademark encumbrances and their resulting restrictions on international trade are "necessary" to achieve the Draft HK Code's public policy objectives at the GHK-SAR's chosen level of protection. These objectives include the protection of public health via breastfeeding, within the meaning of TRIPS Article 8.1, and the prevention of the abuse of IP rights by right holders via deceptive promotion/marketing of formula milk and complementary food products, within the meaning of TRIPS Article 8.2. WTO case law analyzing the application of TRIPS Article 20 is rather sparse, with allegations of TRIPS Article 20 violations limited to the claims recently raised in connection with the pending WTO dispute over Australia's plain tobacco packaging legislation. This dearth of TRIPS Article 20 jurisprudence notwithstanding, currently available legal commentary is quite helpful in properly construing the meaning and intent of TRIPS Articles 8 and 20 in the broader context of the TRIPS Agreement's relationship with other WTO agreements and non-WTO law. [footnotes omitted]
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Lawrence A. Kogan, Esq. is Managing Principal of The Kogan Law Group, P.C., a New York City-based multidisciplinary legal services firm, and President/Director of the Institute for Trade, Standards and Sustainable Development (ITSSD) (www.itssd.org) that is a globally recognized NGO for reporting and analysis of the growing influence of evolving foreign and international public interest rules on private property rights and the American free enterprise and common law systems.