Michelle Lee Stumped at Congressional Hearing

In her testimony before the House Committee on the Judiciary on Wednesday, Director Lee was asked by Congressman George Holding (R - NC) to comment on the Australian law that prohibits manufacturers of tobacco products from using their trademarks.  Lee confessed that she was unfamiliar with the topic, and promised to check and get back to him with an answer.  This seemed to satisfy the congressman.

The issue wasn't familiar to me, either, but a quick internet search turned up lots of stories from three years ago about this, which I had heard about:

Since 2012, all cigarettes in Australia are required to be sold in packages that look like these.  You'll notice the word "brand" on the bottom front of each box.  These are mock-ups; on a real package of cigarettes the word "brand" would be replaced by, say, "Marlboro" or "Camel" or "Winston" in that same plain text on an olive-green background.

The aim of these packages is to deter smokers.  And according to this story in the Financial Times apparently it's working.  Which explains why the representative from North Carolina is particularly interested in this issue.

What makes it an IP issue is that the Australian government has taken the position that having a trademark doesn't grant you the right to use the mark; all it does is grant you the right to exclude others from using the mark.  This concept, while familiar to most IP attorneys, is difficult for most laypeople (and some members of the U.S. Supreme Court) to grasp.

The Australian law is currently the subject of a dispute at the WTO, that was originally brought by Ukraine (!), although it has since been joined by a number of other countries, including the U.S., accusing Australia of being in violation of the TRIPS agreement.  So this bears watching, particularly as there are reportedly other countries, including the U.K., Ireland, and New Zealand. And while it's confined to tobacco products now, this kind of regulation could theoretically be applied to any product or service that a government wants to discourage.