Terribly sorry, Sir Walter…your plant variety denomination can’t be a trade mark too
Wednesday 21st October 2015
Article written by: Dr Fiona Pringle
A recent decision of the Federal Court of Australia highlights why you should select a denomination for your plant variety right that is different from the name used to market the variety.
A Plant Variety Right (PVR, in New Zealand) or Plant Breeder’s Right (PBR, the Australian equivalent) provides the owner with the exclusive commercial rights for dealing with the variety for the term of the PVR or PBR.
When applying for a PVR or PBR, an acceptable denomination (variety name) must be provided. Once the PVR or PBR is granted, the denomination must be used when the plant, or its propagating material, is sold. As noted in the Intellectual Property Office of New Zealand’s PVR guidelines, under New Zealand law a denomination is not able to be registered as a trade mark (and vice versa).
Similarly, in Australia, the Plant Breeder’s Rights Act 1994 specifies that a denomination cannot be or include a registered trade mark, nor a trade mark for which registration is being sought. However, there is nothing explicit in the Australian Trade Marks Act that prevents registration of a PBR variety name as a trade mark.
In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks  FCA 756, the Court determined that the owner of a PBR for a variety of soft leaf buffalo grass was unable to register the PBR denomination “Sir Walter” as a trade mark. The grass variety is an extremely successful and well-known variety in Australia and has been extensively marketed as “Sir Walter” (the denomination) during the term of the PBR. Once the PBR expires in March 2018, any competitor will be able to grow and sell the Sir Walter buffalo grass. Registration of Sir Walter as a trade mark in respect to Class 31 goods (including turf grass) would prevent others from using the Sir Walter mark on the same type of goods.
The Court decision reviewed IP Australia’s refusal to register Sir Walter with respect to Class 31 goods on the basis that Sir Walter was not able to distinguish the goods as being those of the applicant – which is the purpose of a trade mark.
First, the Court considered whether Sir Walter was inherently able to distinguish the applicant’s goods. The Court noted that “[o]ne important circumstance…is the fact that Sir Walter is the name of the very grass variety for which registration of SIR WALTER is sought”. A trade mark must be capable of distinguishing the goods of one trader from another. However, “Sir Walter is the name of the plant variety that constitutes the very thing…for which trade mark registration is sought”. Thus, Sir Walter is not adapted to distinguish one trader’s goods from the goods of another – it denotes the plant variety and other traders would expect to be entitled to use the name Sir Walter for the grass.
The Court next considered whether the use of Sir Walter before filing of the trade mark application resulted in Sir Walter being capable of distinguishing the goods from those of other traders (i.e. acquired distinctiveness). In determining this, the Court assessed the evidence of use submitted by the applicant, which included television and radio advertising, print advertising and various other promotions. The evidence was considered to show “overwhelmingly, an unequivocal use of SIR WALTER to designate a particular thing – the Sir Walter grass – not use of SIR WALTER as a trade mark for distinguishing the appellant’s Sir Walter grass from other traders’ Sir Walter grass”. The Court concluded that the use did not establish that Sir Walter is capable of distinguishing the goods. The trade mark Sir Walter could not be registered with respect to Class 31 goods.
In both New Zealand and Australia, a variety’s denomination can be used in conjunction with a trade mark. Successful examples of this approach in New Zealand are Jazz® apples (PVR denomination “Scifresh”), ZESPRI Gold® kiwifruit (PVR denomination “Hort16A”) and the Sexy Rexy® rose (PVR denomination “Macrexy”). So, when you’re considering what denomination to give your plant variety, make sure that you choose something that differs from the snappy name that you will market the variety with.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.