NOTE: The following open letter has been delivered by email to the office of the Minister of Health of the Republic of South Africa on 31 July 2014. The contents of this letter is published here in furtherance of the debate on plain packaging legislation and the potential impact on the Constitutional rights of the proprietor.

OPEN LETTER

31 July 2014

The Honourable Minister of Health

Dr Pakishe Aaron Motsoaledi

Civitas Building

Corner of Thabo Sehume and Struben Streets

Private Bag X828

PRETORIA

0001

 

Dear Dr Motsoaledi,

RE: PREVENTION OF USE OF TRADE MARKS ON PACKAGING FOR CIGARETTES AND OTHER PRODUCTS.

I am addressing this letter to you to express serious concerns about the approach that you are adopting to the abovementioned matter. I believe that you ought to be aware of these concerns and should take cognisance of them.

I must begin by commending you on the enthusiasm and positive approach that you have displayed in carrying out your function as the Minister of Health and the custodian of the nation’s health. It is indeed refreshing and salutary to experience a cabinet minister displaying such dedication and conscientiousness to making a success of his portfolio and to pursuing the public interest in his field of responsibility.

You obviously feel that the smoking of cigarettes, the excessive consumption of alcoholic beverages, and unsound eating habits are detrimental to the health of the South African public. There is some substance in such a viewpoint. It is within your powers and indeed duties as the Minister of Health to address these matters if they are a cause of public concern. Should you, after establishing all the relevant facts and carefully and objectively weighing up the various interests and considerations involved, be of the view that corrective or preventative measures are necessary, it behoves you to take appropriate action to that end. Acting in this manner amounts to doing your job as a loyal servant of the public.

In deciding upon and implementing a course of action to counteract perceived ills of this nature, I respectfully submit that you must act reasonably and lawfully. In particular you must act within both the spirit and letter of our splendid Constitution, of which we are justifiably proud. With respect, you would be failing in your public duty if you were to act in a manner that is at variance with the Constitution, quite apart from the fact that you would not be acting within the bounds of the law.

The Constitution enshrines the principle that when a proposed course of action or the exercise of rights held by one party entails impinging on entrenched rights of other parties, a balancing process is necessary. One must weigh up, on the one hand, the objective to be achieved by the course of action and the likelihood of doing so by that means, or the effect of exercising the rights in question, against, on the other hand, the detriment caused to the rights being impaired. This means applying the test of proportionality to which I will revert below.

You have in the past publicly expressed the intention of emulating the government of Australia by introducing legislation to require tobacco producers to sell cigarettes with so called “plain packaging”. You reiterated this intention very recently and said that the necessary legislation would be in place by next year. The Australian legislation that you embrace provides that cigarettes must be sold in drab packets dominated by health warnings and pictorial matter illustrating the alleged dangers and consequences of smoking, with branding being limited to words in plain, small print. In particular the legislation stipulates that no trade marks in the form of logos or in fancy print may be used on the packages. It is no doubt fair to assume that your envisaged legislation will be along the same lines and to the same effect. The implication which flows from this is that, while you allow the use of plain word trade marks on cigarette packs and appear to consider that no real harm, in the sense of encouraging people to smoke, can flow from such trade mark usage, for example a word trade mark like MARLBORO appearing in plain print on a cigarette packet, the depiction of this word in a script or fancy font, will bring about the consequences that you seek to prevent, namely encouraging the smoking of cigarettes. Put differently, you appear to believe that by prohibiting the use of the trade mark MARLBORO in script form, and making it necessary for MARLBORO to be used only in plain print, you will make smoking cigarettes a less attractive proposition. With the greatest respect, this is an extremely startling proposition with which I cannot agree.

In similar vein, you have brought out legislation prohibiting the use of trade marks on baby foods which are substitutes for mother’s milk where they depict infants, doubtless because you believe that the use of such trade marks encourage the undesirable practice of mothers  moving away from breast feeding their babies. You are also propagating legislation preventing the use in relation to formulated foods of trade marks which claim certain beneficial nutrients and/or ingredients with health benefits, even though the claim may be factually accurate. Presumably you consider that a trade mark such as SUPER C (which indicates that the product contains vitamin C, an element with health benefits) for sweets unduly encourages the consumption of confectionary, which is perceived to be detrimental to public health. Of course, you will be aware that there is existing legislation which provides for sanctions for the making of incorrect claims regarding the ingredients of a product or its effects. Such claims are rendered unlawful under the Consumer Protection Act and give rise to a criminal offence. The public would thus seem already to be adequately protected against trade marks which are misleading or fraudulent in this respect. On the other hand, If a claim is correct, what is the harm in making it?

It would seem that you have declared war on trade marks, especially logo or graphic marks, as being tools or weapons of evil intent and effect. (Perhaps you are against the concept of intellectual property per se; if so you should talk to your colleague, the Minister of Trade and Industries, who professes to be a supporter!) You ascribe remarkable powers to these types of trade marks to cause social ills. Conversely, you see their eradication as an important means of curing the public of bad habits and health practices. It comes as a great surprise to me, as a lawyer who has specialised in the practise of trade mark law and has worked with trade marks and their uses and effects for more than fortry years, that logo trade marks can have such amazing powers and qualities. I would never have dreamed that the MARLBORO logo could have the power to weave such magical spells, whereas the plain word mark MARLBORO by contrast is devoid of such qualities.

I put it to you that you are misguided in your view of the powers possessed by trade marks, especially logo and graphic trade marks. Furthermore, you are misinformed as to the nature, function and effect of a trade mark. A trade mark has been held by the highest court of the land to be a symbol that denotes the origin of a product in a particular manufacturer. In the case of cigarettes, for instance, the trade mark MARLBORO logo tells the consumer that the product emanates from producer A, whereas the trade mark LEXINGTON logo, tells the consumer that the product comes from producer B. These trade marks enable the consumer to distinguish between the two different makes of cigarettes. How in these circumstances, for instance, prohibiting the use of the MARLBORO logo trade mark can decrease the incidence of smoking simply defies comprehension.

Trade marks are recognised as a form of property both under the common law and under the Constitution. The Constitutional Court has made a specific pronouncement in that regard. As such, they are protected by Section 25 of the Constitution, the so-called “Property Clause”. Section 25(1) of the Constitution (comprised in the Bill of Rights) reads “No one may be deprived of property except in terms of a law of general application, and no law may permit arbitrary deprivation of property […].” It follows from this that it is contrary to the Constitution and unlawful to deprive someone of their property in the form of their trade mark and no law may permit this to happen.

Trade marks are created by using them and causing them to acquire a repute, and by registering them under the Trade Marks Act. Trade marks can be extremely valuable items of property. For example, the trade mark GOOGLE was valued at $44.3 billion in 2011.Their values are largely determined by the extent of their use and the resultant repute that they enjoy. In order to remain valid and extant a trade mark must continue to be used. When use of a trade mark ceases a registration can be cancelled and its reputation withers away and dies, as does the trade mark. Preventing a trade mark from being used thus destroys that trade mark and extinguishes the item of property that it constitutes.

Many, if not all, of the trade marks whose use you are seeking to prevent are registered in the precise form under attack. The well-known MARLBORO logo trade mark is, for instance, in its own right, and separately and distinct from the plain word MARLBORO, a registered trade mark and thus an item of property. When you prevent that trade mark from being used in relation to tobacco products by means of your proposed legislation, you destroy that trade mark and thus extinguish an item of property. You act in this regard contrary to section 25 of the Constitution, and thus unlawfully. If you require substantiation for this proposition, I invite you to read my academic article entitled “Deprivation of Trade Marks Through State Interference in Their Usage” published South African Intellectual Property Journal (2013) 1. The article can also be found at https://blogs.sun.ac.za/iplaw/2013/05/23/podcast-prof-deans-inaugural-lecture/.

Do not be fooled into thinking that, because the corresponding Australian legislation was found by the Australian Supreme Court not to be unconstitutional, our Constitutional Court will necessarily follow suit in respect of your legislation. There are important differences between the Australian Constitution and our own which will bring about a different result to litigation on this issue in this country. For the record, the Australian court actually found that preventing the use of trade marks amounted to a “taking” (i.e. deprivation) of private property, although, for reasons peculiar to the particular wording of their Constitution, it did not find their legislation to be unconstitutional.

I am not presently addressing the merits of your decision to take steps to minimise the smoking of cigarettes and the uses of certain foodstuffs, although it must be said that I am not convinced that you have obtained and carefully evaluated all the relevant facts and weighed up all the various considerations and implications relating to your proposed course of action. What I am criticising is the specific means that you have chosen to attempt to achieve your objective, namely prohibiting primarily the use of logo and graphic trade marks. Not only am I of the view that such means will be entirely ineffective, but also that they are contrary to the Constitution and are unlawful. They will result in an unjustifiable and arbitrary deprivation of property, causing considerable damage to the property owners in question, that is entirely disproportionate to any conceivable public benefit.

I have read that you have withdrawn legislation which requires medical practitioners to obtain licences to practise in particular locations, on the advice of the State Attorney, due to it being contrary to the Constitution. You are clearly mindful of the folly of proceeding with legislation which is unconstitutional. This is a prudent approach and is vastly preferable to having to face a constitutional challenge to bad legislation before the court. In the event that you go ahead with legislation which brings about an arbitrary deprivation of property through destroying trade marks, you will inevitably be confronted with court litigation to declare that legislation invalid. In recent times our courts have unfortunately been besieged by litigation dealing with unconstitutional legislation. Such litigation causes unnecessary diversions of time, energy and tax payers money, all of which can be better spent on more worthy issues such as education and combatting serious crime. Our already overburdened courts and justice system can also be spared being subjected to undue additional pressure.

You have an opportunity to rethink and change your approach regarding the appropriate means to use in order to achieve your objectives discussed above. I urge you to do so and to take competent and informed legal advice on the folly of proceeding down the path that you have outlined. In this way you can avoid embarrassment and venturing into terrain where angels ought to fear to tread.

Yours faithfully,

Owen Dean

Professor of Intellectual Property Law

University of Stellenbosch