SDGs + IP
CITMA Review
Bita Amani and Matthew Rimmer
The editors of a new book explain trade mark law’s unique role in meeting global sustainability goals
Trade marks are well acknowledged as a valuable form of intellectual and industrial property and as significant corporate assets. In the literature on IP and sustainable development, however, trade mark law and related rights are seldom given due credit for their relevance and importance. Often, the scholarship is dominated by work on copyright law and access to knowledge, patent law and access to essential medicines or innovation, creativity, and technology transfer. When trade mark law is occasionally mentioned, it has often been in the context of the Fair Trade labels and other high-profile labelling systems.
The authors of The Elgar Companion to Intellectual Property and the Sustainable Development Goals systematically mapped the matrix of connections between intellectual property rights (IPRs) and the UN Sustainable Development Goals (SDGs), with the help of a diverse cast of contributors from around the world. They also looked to redress the relative neglect of trade mark law and related rights amid diversified examinations of the relationship between IPRs and the SDGs — particularly as they pertain to the environment, public health, agriculture, human rights and the reduction of poverty and inequality.
“Trade mark law and related rights are seldom given due credit for their relevance and importance”
This article offers a selection of some of the key insights from the book and ways that the trade mark profession, in particular, can help advance sustainable global progress.
Right to repair
Trade mark law continues to attract public interest and considerations of user rights historically reserved for copyright law and policy. In the context of the right of repair, IT giant Apple brought a legal action for trade mark infringement against an independent repairer, Henrik Huseby, in Norway. Huseby had been using imported iPhone-compatible screens — which Apple deemed counterfeit — in phone repairs. Norway’s Supreme Court ruled in favour of Apple, and the action has become a cause célèbre.1 The dispute has highlighted the need for trade mark law to be included in discussions of law reform in respect of the right to repair. There should be contemplation of how trade mark law could better promote a circular economy — with responsible consumption and production.
In chapter 17, Taina Pihlajarinne, Professor of Law at the University of Helsinki, discusses IP and responsible production and consumption (SDG 12). She considers how trade marks and certification marks can have positive effects in conveying to consumers environmental sustainability and so may function to advance Target 12.8 of the SDGs by conveying information regarding the characteristics and qualities of goods that may empower sustainable consumption for eco-conscious consumers. This, in turn, may promote sustainable lifespans less directly.
Pihlajarinne also considers the negative impacts of IPRs for planned obsolescence and impediments to the right to repair. She considers trade mark exhaustion perspectives on the reutilisation of products and materials — for instance, where an original trade mark is fixed on a repaired or repurposed item. Noting the question of whether leaving the mark on the item is even legally allowed, she also raises the problem of removing such marks — the difficulty of which may actually be “a direct obstacle to repair or reutilisation”. There is also the possibility of a trade mark actually operating as a “badge of recycling” and an indication of origin of its raw materials, where a product is clearly made of recycled products now serving an alternative use. As Pihlajarinne argues: “IP-based barriers to repair and reutilisation… could be demolished by creating a ‘sustainable lifespan’ principle, indicating that exclusive rights are limited to the notion of a sustainable lifespan”. She continues: “The key idea of the potential principle would be that exclusivity covers only acts beyond those whose genuine purpose is to maximise the lifespan of the product or material.”
There have been burgeoning law reform efforts in respect of the right to repair, including, for example, the EU’s 2024 Right to Repair Directive. There have also been regulatory initiatives and law reform work on the right to repair in the US, Australia and Canada. These are all efforts to promote sustainable development and the circular economy, and trade mark rights should not form a barrier to this right.
Fixing Factories in the UK are community repair hubs that expand the lifespan of electronic appliances
The tobacco endgame
In chapter 3, Matthew Rimmer focuses on the tobacco endgame, exploring the intersection between IP, human rights and sustainable development (particularly SDG 3, dedicated to the promotion of health and wellbeing). Rimmer considers how trade mark law and policy became entangled in conflicts over tobacco control, with public health hanging in the balance of their resolution.
Former Norwegian Prime Minister Gro Harlem Brundtland played a transformative role in the articulation of sustainable development. She also played a key role during her leadership of the World Health Organization (WHO) from 1998 to 2003, helping establish the WHO Framework Convention on Tobacco Control 2003. She was particularly concerned about developing countries and least-developed countries being harmed by the global tobacco epidemic. Brundtland hoped that the framework convention would encourage nation states to introduce a comprehensive array of tobacco control measures.
A number of leading nation states introduced pioneering tobacco control measures, such as graphic health warnings and plain packaging of tobacco products. In response, Big Tobacco companies argued that tobacco control measures had adversely impacted their trade mark rights and other related IPRs. The tobacco industry asserted that public health initiatives violated IP law, trade law and investment law.
The High Court of Australia rejected the claims of the tobacco industry that plain packaging of tobacco products involved an acquisition of property. Similarly, other superior courts have given short shrift to the industry’s claims in legal conflicts based on tobacco control measures. Philip Morris International brought failed investor-state dispute settlement actions against Uruguay and Australia over the introduction of graphic health warnings and plain packaging of tobacco products. Australia successfully defended plain packaging of tobacco products against a number of complainants in the World Trade Organization.
Now, with continuing concerns around fresh threats from the tobacco industry, such as e-cigarettes and disposable vapes, a new generation of tobacco endgame policies is being developed by nation states (such as Australia, New Zealand and the UK) to combat the global tobacco epidemic. Making comparisons to the behaviour of fossil-fuel companies, concerns arise round Big Tobacco’s use of greenwashing tactics to disguise the continuing harms of its products, with the author calling for “zero tolerance” on this matter. No doubt there will be further legal conflict over tobacco control in domestic courts and international bodies.
Plain packaging laws have been enacted in over 20 countries
About the SDGs
In 2015, the UN adopted 17 Sustainable Development Goals (SDGs) “as a universal call to action to end poverty, protect the planet and ensure that by 2030 all people enjoy peace and prosperity”. All 191 UN Member States have committed to achieving the SDGs.
Trade mark law and inequality
SDG 10 is focused on reducing inequality within and among nations. In chapter 15, Bita Amani maps equality as both an internationally recognised human right protected under various legal instruments and a constitutional right. In both cases it is to be understood as a right to substantive equality. She notes that IPRs “define the boundaries of inclusion, exclusion and belonging, with a long history tied to governing communities and nation-state building”. Moreover, she highlights how “IPRs’ and SDG 10’s promises are stymied by the politics of social contexts in which such rights exist, but also by a narrow understanding of what reducing inequality demands as a commitment”. In the context of trade marks, she highlights harmful, discriminatory uses of race branding that move beyond communicating trade source identity to racialised branding of identities with signs that undermine equal recognition of dignity and citizenship.
In the US context, following a successful constitutional challenge in 2017 with the Matal v Tam2 decision to strike down the prohibition on registering disparaging marks, market pressures rather than law generated a move away from well-established racialised marks. In Canada, the constitutionality of such trade mark provisions, which are far more restrictive in prohibiting both registration and use of such marks “as a trade mark or otherwise”, has yet to be tested. Yet an interim decision of a human rights tribunal demonstrates that such bodies can and should seize jurisdiction over trade mark-based discrimination, holding that trade marks are a negative right that must remain compliant with domestic anti-discrimination legislation.
Supporting cycling to help improve air quality and road safety is one of the SDGs’ aims
Geographical indications
In chapter 22, Titalayo Adebola (Lecturer in Law at the University of Aberdeen) provides an insightful analysis of how geographical indications (GIs) may be leveraged through branding to advance the commercial success of a domestic product, taking the example of Ogogoro liquor. GIs are a form of recognised IP provided for by the TRIPS Agreement through which collective, if not cultural, interests have been advanced. Internationally, subject to some exceptions and limits, TRIPS provides higher protection for wines and spirits (Article 23). Historically, national protections were limited to wines and spirits, raising critiques that these served to advance Eurocentric cultural production while traditional cultural expressions of Indigenous communities were left behind. The scope of GI protection has expanded in some jurisdictions since the TRIPS Agreement.
Reflecting on the African Continental Free Trade Area, Adebola considers the African Union’s Agenda 2063 and the commitment to sustainable development. Adebola writes that: “GI[s] help to distinguish origin-linked products and generate revenue across production and marketing value chains.” Still, with only some 200 registered GIs for the continent, she argues that such instruments remain significantly underutilised by African nations.
Using the Ogogoro palm spirit product of Nigeria as a case study, she explains how potential GI protection may complement branding efforts to help ensure the commercial success of domestic products for trade and export. This is a product that is sold unpackaged and unbranded, in unlabelled and unsealed bottles, integrated into cultural practices and ceremonies and linked to resource-poor people, and may be attractive for GI protection in multiple African countries. GI protection may provide a basis for quality consistency and standardisation and may improve the commercial success of the good domestically in competition with imports, she suggests, as “GIs primarily stimulate demand for the class of products collectively”.
Overall, branding and exporting GIs can contribute to sustainable development in Africa and advance SDG 17 to “shift African countries from reliance on primary commodities to value-added products”. Additionally, GI protection may foster governmental interest and support for export diversification, which may help generate more competitive products and expanded market opportunities.
Important role
World Intellectual Property Day 2024 focused on how IP “encourages and can amplify the innovative and creative solutions that are so crucial to building our common future”. This underscores the widespread understanding that IP law, policy and practice can play an important role in the promotion and realisation of the SDGs. This article has hopefully, if briefly, highlighted how trade mark law, in particular, can make a distinctive and unique contribution to sustainability.
There are many opportunities for trade mark practitioners to use their professional skills to facilitate the shift to a circular economy and to a more equitable society in which everyone can thrive. Admittedly, this will require radical measures — requiring us to do no less than realign, reform and recalibrate trade mark law, GIs and related rights so that they promote the SDGs.
Says Christine Milne AO in her foreword: “The evolution and practice of intellectual property law and regulation cuts across all of the SDGs and is critical to their success or failure.” As this collection makes clear, there is much work to be done.
1 Case No HR-2020–1142-A (19–141420SIV-HRET), Henrik Huseby v Apple Inc Trademarks Act, Sec 4
2 582 US 218 (2017)
Dr Bita Amani is a Professor of Law at Queen’s University, Canada, and Dr Matthew Rimmer is a Professor in Intellectual Property and Innovation Law at the Faculty of Business and Law at the Queensland University of Technology, Australia. Along with Caroline B Ncube (Department of Commercial Law, University of Cape Town), they are Editors of The Elgar Companion to Intellectual Property and the Sustainable Development Goals (Edward Elgar Publishing, www.e-elgar.com).
Reprinted from Bita Amani and Matthew Rimmer, ‘SDGs + IP: The Editors of a New Book explain Trade Mark Law’s Unique Role in Meeting Global Sustainability Goals’, (2024) Issue 485 CITMA Review, November/ December https://www.citma.org.uk/resources/sdgs-ip-review1124.html
