In the summer of 2011, the Finnish National Supervisory Authority for Welfare and Health (herein 'Valvira') set a general prohibition for the manufacturer of tobacco products to inform consumers of changes in tobacco product packaging. The decision is also significant with regards to the change proposed by the European Commission whereby the Commission has proposed a transfer to generic retail sales packaging of tobacco products by removing various trademarks from the packaging of current tobacco products.

In its decision of 25 July 2011, Valvira has forbidden the manufacturer of tobacco products from informing consumers of future changes in tobacco product packaging, for example, with the help of pieces of paper to be placed inside the boxes and the tear strip outside the boxes.

According to Valvira, often the object of renewing product packaging is to increase the attractiveness of products and to attract new users to the products, although packaging reforms may cause confusion among 'old' users before the users learn to identify the product's new trade dress. Therefore, the product sales may also decrease temporarily.

As the tobacco company had systematically informed consumers in various ways of the future product changes, Valvira found that the tobacco company has attempted to contribute to the fact that the users would recognise the products under the mark in question in future as well and that product sales would not decrease due to the packaging reforms. Valvira found that the purpose of the tobacco company had been to promote the demand for tobacco products in a situation where there is a risk that the sales and reputation of the products decrease due to the packaging reforms carried out by the company itself.

Therefore, Valvira found that the tobacco company had breached section 8(1) of the Finnish Tobacco Act which lays down provisions on the prohibition of advertising and other sales promotion of tobacco products, and forbid the tobacco company under the threat of a fine of EUR 150,000 from repeating its actions or otherwise informing consumers in future of the renewal of packaging of its tobacco products.

Valvira's decision is topical considering the European Commission's open consultation from last autumn where the reaction of various parties towards the possible changes of the Tobacco Product Directive (2001/37/EC) was inquired. One change proposed by the Commission was to introduce so-called generic packaging ('generic or plain packaging'), in which case the trade dresses of tobacco product packaging would be harmonised in such a way that only the name of the product mark could be printed on light or grey coloured packaging in addition to obligatory packaging markings. The introduction of generic packaging has also been recommended in Finland's official reply to the Commission's open consultation.

In respect of proprietors, the harmonisation of retail sales packaging of tobacco products as proposed by the Commission would mean, above all, that the colourful or stylised trademarks and other identifiers on the current packaging might have to be abandoned. Thus, generic packaging has many implications for trademark rights.

The introduction of generic packaging would make the imitation of packaging substantially easier and, correspondingly, the recognition of counterfeit products substantially more difficult. Therefore, for example, the Finnish Anti-Counterfeiting Group has objected to the change proposed by the Commission.

Additionally, the introduction of generic packaging would also put the previously used trademarks at risk in respect of actions for annulment, as the stylised trade dresses would have to be abandoned. According to the Finnish Trademarks Act, an unused trademark can be invalidated unless the proprietor is able to give a proper reason for the non-use.

According to foreign legal literature, it is nevertheless completely ambiguous whether the introduction of neutral packaging can form a justified reason for the proprietor not to use the trademark. Foreign legal literature also discusses whether the introduction of neutral packaging is, in general, legal in light of international agreements concerning intellectual property rights.

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