6. Tobacco product trade marks

Section 17(3) of the Act states:

Despite subsection (1)(b), the Commissioner may register a trade mark even if use of the trade mark is restricted or prohibited under the Smoke-free Environments Act 1990.

Section 17(3) is an exception to section 17(1)(b) of the Act. It permits the registration of a tobacco product trade mark even if the use of that trade mark is restricted or prohibited under the Smoke-Free Environments Act 1990.

Section 24(1) of the Smoke-Free Environments Act 1990 prohibits the use (other than in a private capacity) of a tobacco product trade mark:

• On any article other than:
  • A tobacco product; or
  • A package or container in which a tobacco product is sold or shipped; and
• For the purpose of advertising anything other than a tobacco product.

Section 24(3) of the Smoke-Free Environments Act 1990 states that:

In the absence of section 17(3) of the Act, section 17(1)(b) of the Act would prohibit the registration of tobacco product trade marks in respect of goods other than (a) tobacco products, or (b) the packages or containers in which tobacco products are sold or shipped.

Section 17(3) of the Act reproduces section 16(2) of the Trade Marks Act 1953. When it was first enacted, the Trade Marks Act 1953 did not include section 16(2) of that Act. It became apparent, however, that the general prohibition in section 16 of the Trade Marks Act 1953 would be contrary to Article 15 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) unless a qualification was introduced.⁴⁹ The Trade Marks Act 1953 was amended in 1994, via the inclusion of section 16(2) of that Act, to make it clear that tobacco product trade marks were eligible for registration notwithstanding the Smoke-Free Environments Act 1990.

Footnote

⁴⁹ Article 15 of the TRIPS Agreement states: “The nature of the goods or services to which a trade mark is to be applied shall in no case form an obstacle to registration of the trademark”.