Your informative piece contains the following statement that reveals the basic misunderstanding that has obscured the debate over this issue: “Australia, which in other contexts is seen as one of the most vigorous nations on IP rights protections, restated its full commitment to international IPR obligations.” This sentence implies that Australia strongly protects IP, except in the field of trademarks for tobacco. This is not correct. In both the Tobacco Plain Packaging Act 2011 [TPPA], and the Trade Marks Amendment (Tobacco Plain Packaging) Act 2011, there is not a shred of evidence that Australia has diminished the protection of tobacco trademarks. On the contrary, section 28 of the TPPA provides in the opposite direction: in spite of the measures restricting the use of tobacco trademarks, their registration and protection remain untouched. [This is compliant with Article 15.4 of TRIPS and is important for the purposes of Article 16.3, because Australia extends protection against dilution only in the case of registered well-known trademarks. See Section 120(3)(b)(i) of the Trade Marks Act 1995, as consolidated as of 14 January 2011.].
The issue here is not one of protection – it is one of use. Article 20 of the TRIPS Agreement is not about protection (or limitation of protection), but rather of use of the trademarks. So, here is the real issue: how far can WTO Members go when it comes to impose measures that limit the freedom of trademark owners to use their own trademarks? The answer is provided by Article 20 of TRIPS: they can go as far as it is justifiable. Please note that Article 20, by contrast with Article 8.1 (which also provides for the possibility of measures that may affect the use of IP rights), does not refer to the necessity of the measures. So, WTO Members, in imposing encumbrances on the use of trademarks, are not conditioned by reasons of necessity (necessity implies a link of cause and effect and thus is much more difficult to demonstrate when issues of public policy are at stake), but rather of justifiability.
In this regard, I would draw your attention to Section 40(4) of the Industrial Property Act of Oman, of 2008: “(4) The Minister of Health may take measures to limit the use of marks with the purpose of facilitating the prescription of and the access to generic pharmaceutical products and medical devices, or with the purpose of discouraging the public consumption of goods that are deemed prejudicial to health provided such measures do not impair the use or effectiveness of trademarks used in relation to such good or service to distinguish goods of one undertaking from those of other undertaking.” Under the Omani law, the Minister of Health may prohibit the use of trademarks for tobacco products (among other products, like fast food). But, if he allows the use, he cannot take measures that impair their distinctiveness as compared to identical goods. This is, to my knowledge, the provision that best implements the spirit and the letter of Article 20 of TRIPS. The Omani statute can be found in IP-lex, in the WIPO website.