Page:JT International SA v Commonwealth of Australia.pdf/107

Crennan J

Subject to exceptions in some jurisdictions for specialist tobacco retailers, legislation in each State and Territory now prohibits the display and advertising of tobacco products at retail premises, except by way of signage prescribed by regulations.

Such restrictions have the effect that all traders in the retail tobacco trade depend on the verbal, aural and allusive features, and any inherent or acquired distinctiveness, of their brand names in order to distinguish their goods from those of others in the course of retail trade. It must be noted that registered trade marks which are composite marks containing no word or brand name cannot be applied to retail packaging under the provisions of the Packaging Act. Further, visual distinctions between brand names have been minimised by the provisions of the Packaging Act requiring packaging to appear generic. Nevertheless, the visual, verbal, aural and allusive distinctiveness, and any inherent or acquired distinctiveness, of a brand name can continue to affect retail consumers despite the physical restrictions on the appearance of brand names imposed by the Packaging Act. It was noted in the Agreed Facts in the BAT proceedings that, since July 2010, "hundreds of millions of packets of Winfield branded cigarettes" using the Winfield get-up and "tens of millions of packets of Dunhill branded cigarettes" using the patent and registered design have been sold in Australia.

Although the plaintiffs wished to emphasise that the Packaging Act prohibits them from using their registered trade marks, as registered, on retail packaging, it was not suggested by the plaintiffs that their tobacco products were ordered by consumers in the retail trade without reference to their brand names; it was not suggested that relevant goodwill was not significantly attached to their brand names; and it was not suggested that the brand names in the composite marks, as registered, would be insignificant in any opposition or infringement proceedings under the Trade Marks Act or in any action for passing off.