Part 32A
Table of Contents
Part 32A Examination of Trade Marks for Plants (in Class 31) .............................................. 1
Relevant Legislation .............................................................................................................. 1
1. Introduction ....................................................................................................................... 2
2.1 Section 42: Contrary to Law ............................................................................................ 4
2.2 Section 39: Prescribed Signs .......................................................................................... 8
2.3 Section 41: Capacity to Distinguish ................................................................................. 9
2.4 Section 43: Deception and Confusion ........................................................................... 16
2.5 Section 44: Comparison of Trade Marks ....................................................................... 19
Annex 1 - Applicable Sections of the PBR Act..................................................................... 21
Annex 2 - Applicable Sections of the UPOV Convention ..................................................... 24
Annex 3 - Applicable Sections of the ICNCP ....................................................................... 26
Annex 4 - An Example of a PBR Letter of Consent ............................................................. 29
Annex 5 - Case Law Summaries ......................................................................................... 30
Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material34
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Part 32A Examination of Trade Marks for Plants (in
Class 31)
Relevant Legislation
Trade Marks Act 1995
Section 17
Function as a trade mark
Section 24
Trade mark consisting of sign that becomes accepted as sign
describing article etc.
Section 39
Trade mark containing etc. certain signs
Section 41
Trade mark not distinguishing applicant’s goods or services
Section 42
Trade mark scandalous or its use contrary to law
Section 43
Trade mark likely to deceive or cause confusion
Section 87
Amendment or cancellation - loss of exclusive rights to use trade
mark
Section 88
Amendment or cancellation - other specified grounds
Plant Breeder’s Rights Act 1994
Section 11
General nature of PBR
Section 27
Names of new plant varieties
Section 53
Infringement of PBR
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Part 32A
1. Introduction
1.1 Overview
Examination of trade mark applications filed in Class 31 in respect of plants and plant
material involves consideration of additional requirements arising from the Plant Breeder’s
Rights Act 1994 (PBR Act) as amended by the Intellectual Property Laws Amendment Act
2006 (No. 106).
The PBR Act protects the names of plant varieties and their synonyms. The examiner must
consider whether a trade mark is similar to a plant name protected under the PBR Act and
whether a contrary to law ground for rejection applies under section 42 of the Trade Marks
Act 1995 (TM Act).
Only those applications with a claim in Class 31 which includes plants or plant material need
to be considered in terms of the PBR Act. Plant material includes all parts of the plant, such
as fruit, flowers, seeds, vegetative cuttings and other live plant tissues.
“Animal foodstuffs”, “litter” and “mulch” need to be considered in terms of the PBR Act if the
goods notionally include material that is capable of reproducing itself. That is, if the goods
notionally include seeds, grains, or other propagating material such as live vegetative
cuttings.
This part of the Manual also discusses considerations in relation to sections 39, 41, 43 and
44 of the TM Act. It is important to note that Class 31 applications may attract grounds for
rejection under several parts of trade mark legislation and that all problems need to be
resolved before an application can be accepted.
1.2 The Plant Breeder’s Rights Act 1994
The PBR Act governs the granting of proprietary rights to breeders of new varieties of plants
and fungi. The scope of Plant Breeder’s Rights, including in relation to harvested material, is
described in section 11 of the PBR Act (see Annex 1)
1.3 The Register of Plant Varieties
Information contained in the Register of Plant Varieties can be viewed via the Plant
Breeder’s Rights database. The database records changes in the details and status of
applications. The following table explains the statuses used on the PBR database:
PBR status
Meaning
Equivalent TM
status
Accepted
Complies with the provisional requirements of the
PBR Act. The variety has provisional protection
but is yet to be examined.
Pending
Refused
Does not meet the requirements of the PBR Act
for provisional acceptance. The variety has no
protection and will not be examined.
No equivalent – the
closest is “not
meeting Minimum
Filing
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Part 32A Examination of Trade Marks for Plants (in Class 31)
Requirements”.
Granted
A registered right. The variety has full protection
under the PBR Act.
Registered/Protected
Withdrawn
Withdrawn after meeting the requirements for
provisional acceptance but before registration is
achieved. A variety no longer has provisional
protection.
Withdrawn or
Lapsed
Terminated
The variety is voluntarily surrendered after
registration but before the right has expired, or
has been revoked. The variety is no longer
protected.
Withdrawn (after
registration)
The maximum term of PBR has run out and the
variety is no longer protected.
No equivalent – the
closest is “Removed
– Not Renewed”.
Expired
Removed – Not
Renewed
1.4 Glossary of terms used in this chapter
Genus (pl.
genera)
A taxonomic grouping of similar species.
Species
The basic category of biological classification, intended to designate a
single kind of plant, any variations existing among the individuals
being regarded as not affecting their essential sameness.
Similar genera are grouped into families.
Similar species are grouped into genera.
Variety
A category within a species.
Synonym
An official name that is included in a PBR application in addition to the
name of the variety.
Alternate
name
An unofficial synonym.
Trade
designation
A name that has been used for marketing a plant variety in place of its
official name.
Trade name
A name associated with a plant variety for marketing purposes.
Trade
reference
A name nominated in a PBR application, indicating a name to be used
for marketing the variety.
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Part 32A
2. Examination of Plant Trade Marks
2.1 Section 42: Contrary to Law
A ground for rejection under section 42 is applicable if a trade mark is likely to infringe
protection provided by the Australian PBR Act. That is, when:
a. the trade mark material is substantially similar to a plant variety name or synonym of
an accepted or granted PBR
AND
b. the claimed Class 31 goods are notionally of the plant type for which the PBR is
listed
AND
c. the owner of the trade mark application is a different entity to the title holder of the
PBR.
2.1.1 Substantial similarity between a trade mark and a PBR
2.1.1(a) Plain word trade marks 1
The trade mark and the PBR plant variety name or synonym should be considered as
wholes. The comparison can be likened to the comparison of “substantially identical” trade
marks under section 44 of the TM Act.
2.1.1(b) Composite or fancy trade marks
Names and synonyms appear in plain typeface only on the PBR register. Therefore, the
examiner will need to consider whether the appearance of a PBR name or synonym in a
trade mark is meaningful or buried. A meaningful appearance is most likely to occur if the
PBR appears as a separate element, or if use of a particular font or embellishment does not
render the PBR unrecognisable.
The following are examples of trade marks that are, or not, considered substantially similar
to PBRs:
Trade mark
PBR
Substantially
similar?
DRA
Yes
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Part 32A Examination of Trade Marks for Plants (in Class 31)
DRA BLACK ROCK
No
DRA
No
DRA
Yes
DRA
Yes
DRA-MA
DRA
No
DRA-MA
DRAMA
Yes
DRAMO
DRAMA
No
DRA
PINK DRA
No
PINK DRA
DRA
No*
PINK’S DRA
PINK DRA
Yes
PYNQ DRA
PINK DRA
No
DRA BLACK
ROCK
*A trade mark that is not considered substantially similar to a PBR may still attract a
ground for rejection under sections 41 and/or 43 of the TM Act if the difference is an
element that is common to the trade (see part 2.3.2 of this chapter).
A ground for rejection is not applicable when the trade mark is substantially similar to a PBR
trade reference. This is because a trade reference has no regulatory significance under the
PBR Act. However, a trade reference may attract a ground for rejection under sections 41
and/or 43 of the TM Act if research shows market place use to be of an alternate name for
the plant material rather than an identifier of trade source. (For more information, see part
2.3.1(c) of this chapter)
A PBR result with a status of expired would attract a ground for rejection under sections 41
and/or 43 as the name has been established. Results with a status of refused, withdrawn
or terminated may also attract a ground for rejection under sections 41 and/or 43 if research
shows market place use or recognition in another jurisdiction.
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Part 32A
2.1.2 Overcoming a section 42 ground for rejection
2.1.2(a) Amending the goods
If the trade mark’s claim in Class 31 has sufficient scope, the applicant may amend their
specification to remove the goods of a similar type to the PBR plant type (either by excluding
the offending goods or by restricting to goods that don’t encompass the offending goods).
Exclusion of goods at the genus level is usually sufficient. However, if similar goods with the
same common name cross several genera (for example: Millet), exclusion of Millet products
would overcome the ground for rejection.
Example 1:
•
A trade mark application for GOLDEN DAWN is filed in Class 31 for plants and
plant material.
•
Research shows that there is an accepted or granted PBR for ‘Golden Dawn’ for
Narcissus.
•
A section 42 ground for rejection should be taken as the trade mark claim notionally
includes Narcissus bulbs, plants, flowers and plant tissues/cells.
•
To overcome the objection, the applicant could amend their claim to: Plants and
plant material, none being of the genus Narcissus.
Example 2:
•
A trade mark application for DELTA DAY is filed in Class 31 for grains and seeds.
•
Research shows that there is an accepted or granted PBR for ‘Delta Day’ for
Pennisetum glaucum (Pearl Millet).
•
A section 42 ground for rejection should be taken as the trade mark claim notionally
includes Millet grains and seeds from different genera.
•
To overcome the objection, the applicant could amend their claim to: grains and
seeds, none being Millet.
2.1.2(b) Change in status
If the PBR status changes from accepted to withdrawn, terminated or expired, the variety
no longer has provisional protection and the section 42 ground for rejection can be
withdrawn.
2.1.2(c) Letter of consent
The trade mark application may be accepted if the applicant provides a Letter of Consent
from the PBR title holder, agreeing to the use and registration of the PBR variety name or
synonym as part of a trade mark for the offending goods (see s11 of the PBR Act).
In this circumstance, the owner of the trade mark will need to agree to an endorsement to
that effect. The goods will also need to be restricted to accord with the plant variety name or
synonym.
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Part 32A Examination of Trade Marks for Plants (in Class 31)
For example:
It is a condition of registration that the applicant has the consent of the PBR titleholder
to use the <plant variety name/synonym> ‘xxxx’ in a trade mark for the duration of the
PBR right.
and
<Specification>; all the foregoing being plants or plant material of <genus> < variety
name/synonym ‘xxxx’>
Note: In instances where an application has received a ground for rejection under more than
one section of trade mark legislation, a Letter of Consent will not overcome a ground for
rejection under sections 41 or 43.
See Annex 4 for an example of a Letter of Consent.
1. Words or phrases in plain typeface with no embellishment
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Part 32A
2.2 Section 39: Prescribed Signs
Paragraph 39(2)(a) of the Trade Marks Act states that a trade mark may be rejected if it
contains or consists of a sign that is prescribed in the regulations for the purposes of section
39(2), OR is a sign so nearly resembling the prescribed sign as to be likely to be taken for it
(subparagraph 39(2)(b)(i)).
In accordance with words and symbols prescribed in regulation 4.15(a), a ground for
rejection under section 39 is applicable if any of the following appear in a trade mark:
•
the words ‘Plant Breeders Rights’
•
the PBR symbol:
•
the initials PBR (in the context of indicating ‘Plant Breeders Rights’).
2.2.1 Overcoming a section 39 ground for rejection
The prescribed sign may be removed from the trade mark if removal does not substantially
alter the identity of the mark under section 65 of the Trade Marks Act.
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Part 32A Examination of Trade Marks for Plants (in Class 31)
2.3 Section 41: Capacity to Distinguish
As discussed in Part 22 of this Manual, the Registrar must be satisfied that the trade mark as
a whole is capable of distinguishing the goods or services claimed. While plant trade marks
are no different in this respect, there are some issues peculiar to these types of marks which
examiners should be aware of.
Note: Section 41 of the Trade Marks Act 1995 was amended by the Intellectual Property
Laws Amendment (Raising the Bar) Act 2012. The repealed section 41 is set out in full in
Annex A1 of Part 22 of this Manual.
In this section, reference to a ground for rejection under section 41(3) or 41(4) refers to a
ground for rejection under section 41(6) or 41(5) for trade mark applications with a filing date
before 15 April 2013.
Any part of plant nomenclature (see 2.3.1 below) is, on its own, not inherently adapted to
distinguish the trade origin of plants or plant material of the relevant type. Plant material
includes all parts of the plant, such as fruit, flowers, seeds, vegetative cuttings and other live
plant tissues.
The principles of the UPOV Convention (International Convention for the Protection of New
Varieties of Plants - see Annex 2) requires that any particular variety should only have one
name. And that unique plant name should be
•
universal and freely available to anyone to use
•
used at all times.
If a trader is the originator of a new plant variety, or the controller of its distribution, it does
not mean that any name given to the plant will automatically act as an identifier of trade
source. Although the trader may be the only source of the plant material, if the name is likely
to be viewed by consumers as apt for normal description it will not function as a trade mark.
2.3.1 The Name of a Plant
In the plant industry, plant names are used to identify particular plants and differentiate them
from other plants. Plant names are subject to scientific and plant industry naming
conventions and fall into a number of different categories:
•
scientific nomenclature (particularly genus and species, which identify every plant by
a unique binomial)
•
invented names to further differentiate plants within the same genus and species
(often referred to as varieties or cultivars)
•
alternative invented names (often called synonyms)
•
common names, which often reflect a characteristic of the plant.
Examples of the different naming conventions applied to plants
Genus
Species
Variety/ cultivar
Synonym
Common name
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Part 32A
Acacia
cardiophylla
'Gold Lace'
Kuranga Gold
Lace
Wyalong Wattle
Acacia
baileyana
'Purpurea'
n/a
Purple Leaf
Cootamundra
Wattle
Plant names (solus, or in a combination similar to the format of accepted naming
conventions) cannot perform the function of a trade mark for plants or plant material of the
relevant type.
2.3.1(a) Variety names
The name given to a plant variety is the name of the product. It is the apt name when
referring to that particular thing.
The following terms are synonymous and used interchangeably in plant industry literature:
•
variety
•
plant varietal name
•
plant variety name
•
variety denomination
•
denomination
•
name of a plant variety
•
cultivar
•
cultivated variety
Shanahan’s Australian Law of Trade Marks and Passing Off, 5th Ed., discusses the
difficulty of registering the “name of the product” in relation to plants:
[20.560] Name of the product
In Siegert v Findlater Fry J said:
The person who produces a new article and is the sole maker of it, has the greatest
difficulty (if it is not an impossibility) in claiming the name of that article as his own,
because until somebody else produces the same article there is nothing to distinguish
it from. The question is one of fact, namely whether the name indicates the product
in general or the product as emanating from one trade source. The name of a
product may only be in common use overseas but Australian traders should still "be
free to use normal and accepted descriptions".
… A name may become generic if applied to a plant variety, and necessarily so
when adopted as the name of a new plant variety registered under the Plant
Breeder's Rights Act 1994 (Cth). However, a plant variety name in combination
with other matter can be distinctive depending on the additional material in the
mark. [emphasis added]
The inability of a varietal name to function as a trade mark was also considered in:
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Part 32A Examination of Trade Marks for Plants (in Class 31)
•
Wheatcroft Bros Ltd’s Trade Marks (1954) 71 RPC 43
•
"Ogen" Trade Mark [1977] RPC 529
•
P.A and E.V Strauss (1999), 47 IPR 191 (“Tropical Birch”)
See Annex 5 for summaries of these cases.
2.3.1(b) Synonyms
In the context of plant nomenclature, synonym has particular meaning. A synonym listed on
the Register of Plant Varieties is recognised as an official name and is subject to the same
considerations as a variety name.
A name that does not appear as a synonym on a PBR Register (in Australia or overseas),
but is used in the same way as a synonym in the market place, is known as an alternate
name.
2.3.1(c) Trade names and alternate names
The following terms are synonymous and used interchangeably in plant industry literature:
•
trade name
•
trade designation
•
trade reference
The ICNCP (International Code of Nomenclature for Cultivated Plants – see Annex 3)
recognises trade designations as a marketing tool but does not regulate use of such names.
Similarly, the PBR register acknowledges trade references but does not regulate their use.
In connection with plant material, “trade name” (or “reference” or “designation”) is not
synonymous with “trade mark”. This is because the reference is often intended to be used
in connection with only one variety of plant (such as, an attractive name for consumers when
the variety name is a breeder’s code, or when the variety name can’t be used in a particular
jurisdiction).
Both the ICNCP and the UPOV Convention recognise that some trade names may be, or
contain, a trade mark. However, both agree that trade marks in use need to be clearly
differentiated from the variety name and not used instead of it.
Article 20(8) of the UPOV Convention states:
“When a variety is offered for sale or marketed, it shall be permitted to associate a
trademark, trade name or other similar indication with a registered variety
denomination. If such an indication is so associated, the denomination must
nevertheless be easily recognisable.” [emphasis added]
In summary, if someone chooses to apply another name to a plant variety and does not use
its apt name, then the other name becomes an alternate or de facto name for that variety
since there is no other way of identifying it. In this case, the alternate name is not distinctive
and is not prima facie inherently adapted to distinguish as a trade mark.
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Part 32A
Note: The ICNCP provides suggested formats for presenting a trade designation with the
accepted variety name (such as, Dianthus ‘Londaison’ FANTASIA). The formats would
attract a ground for rejection under section 41 because they are presented in a similar way
to accepted naming conventions in the market place (e.g. Genus, followed by other
information). The average consumer is likely to interpret the material as referring to the
plant’s name, regardless of the use of capital letters or lack of quotation marks.
Acceptable formats for trade mark purposes are where the trade designation precedes the
genus/variety information or is otherwise clearly separated from it.
For example:
FANTASIA Dianthus
‘Londaison’
OR
Dianthus ‘Londaison’
FANTASIA
Correct use of a trade name is further discussed in comments on SFR Holdings Inc [2013]
ATMO 77 at Annex 5.
A trade name that is used in connection with a group or series of plants will usually be
acceptable if research shows that the owner is using it correctly. That is, as an element used
in connection with (but distinct from) the required genus and variety information and not in a
similar way to accepted naming conventions.
2.3.2 Descriptive words which are common to the trade
Plant names may include descriptive references which are in common use. These add very
little if any inherent adaptation to distinguish a trade mark in which they are used. Such
references include
•
colours (red, green, magenta, tangerine, etc)
•
seasons (Spring, Summer, Autumn, Winter)
•
sizes (mini, dwarf, giant, etc)
•
bloom type (double, single)
A ground for rejection under section 41(4) is applicable if research identifies a plant name of
the relevant type that only differs from the applied for trade mark by words that are common
to the trade. The trade mark as a whole would be material that others may think to use
without improper motive.
2.3.3 Claims for animal food, litter or mulch
In keeping with the scope of a Plant Breeder’s Right and the principles of the UPOV
Convention, animal foodstuffs, litter and mulch in Class 31 need to be considered in terms of
plant varieties if the goods notionally include material that is capable of reproducing itself.
That is, if the goods notionally include seeds, grains, or other propagating material such as
live vegetative cuttings.
This is because a trader should be able to refer to ”animated” or “live” ingredients by their
apt name. Goods are not considered problematic if the ingredients are “de-animated” or
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Part 32A Examination of Trade Marks for Plants (in Class 31)
“dead” (e.g. cooked or pulverised), or if the goods are used in such a way as to discourage
propagation (e.g. litter used for bedding in a stall or barn).
2.3.4 Raising a ground for rejection (gfr) under section 41
Trade mark
Gfr
The trade mark as a whole includes sizeable graphic elements that
are not realistic or commonly available representations of the goods.
No
The trade mark as a whole creates another meaning.
No
Example:
•
An application is received for DREAM EUCALYPTUS
claiming Eucalyptus plants.
•
Research shows that “Pink Dream” is a recognised variety of
Eucalyptus.
•
If the applied for trade mark was for DREAM only, a s41(4)
gfr should be raised as the trade mark would closely
resemble something needed by others.
•
However, DREAM EUCALYPTUS as a whole phrase has
other meaning, such as “ideal Eucalyptus” or “Eucalyptus that
is too good to be true”.
The trade mark as a whole only includes additional material such as
•
common plant terms or
•
minor embellishment or
•
realistic or commonly available representations of the goods.
S41(4)
The trade mark resembles something that other traders may think to
use.
The trade mark as a whole is presented in a conventional naming
format but research does not identify a variety in the market place.
S41(4)
Example: EUCALYPTUS ‘ROSIE’S DREAM’
The trade mark is clearly the most apt description for a particular
product rather than comprising material that might be capable of
functioning as a trade mark.
The trade mark as a whole is the name of a plant (identified by the
PBR database or other research, including an expired PBR).
S41(3)
2.3.5 Overcoming a section 41 ground for rejection
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Part 32A
2.3.5(a) Amending the goods
If the trade mark’s claim in Class 31 has sufficient scope, the applicant may amend their
specification to remove the problem goods (either by excluding the plant type or by
restricting the goods to a different plant type/s).
Exclusion of goods at the genus level is usually sufficient. However, If similar goods with the
same common name cross several genera (for example: Millet), exclusion of Millet products
would overcome the ground for rejection.
Example 1:
•
A trade mark application for GOLDEN DAWN is filed in Class 31 for plants and
plant material.
•
Research shows that ‘Golden Dawn’ is a variety of Narcissus.
•
A section 41(3) ground for rejection should be taken as the trade mark claim
notionally includes Narcissus bulbs, plants, flowers and plant tissues/cells.
•
To overcome the objection, the applicant could amend their claim to: plants and
plant material, none being of the genus Narcissus.
Example 2:
•
A trade mark application for DELTA DAY is filed in Class 31 for grains and seeds.
•
Research shows that ‘Delta Day’ is a variety of Pennisetum glaucum (Pearl Millet).
•
A section 41(3) ground for rejection should be taken as the trade mark claim
notionally includes Millet grains and seeds from different genera.
•
To overcome the objection, the applicant could amend their claim to: grains and
seeds, none being Millet.
Example 3:
•
A trade mark application for SPRING DAWN is filed in Class 31 for animal
foodstuffs.
•
Research shows that ‘Spring Dawn’ is a variety of Helianthus (Sunflower) and Lolium
(Ryegrass).
•
A section 41(3) ground for rejection should be taken as “bird seed” and “food for
livestock” are within the scope of the trade mark’s claim and seeds of Helianthus or
Lolium, notionally contained within the claimed goods, would be able to reproduce
themselves.
•
To overcome the objection, the applicant could amend their claim to:
•
animal foodstuffs, none being plants or plant material of the genera
Helianthus or Lolium or
•
pelletted animal foodstuffs’ or
•
animal foodstuffs, being canned food for dogs and cats.
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Part 32A Examination of Trade Marks for Plants (in Class 31)
Note: If the trade mark appears to be a particular variety in many genera, it is preferable for
the owner to refine their claim to the genus/genera and variety/ies of interest (e.g. “all of the
foregoing being varieties of Gladiolus”). The owner cannot specify the problem genus.
Refining the claim is in keeping with office practice to ensure that goods or services are
described clearly and accurately.
2.3.5(b) Evidence of use
Note: This section only relates to a ground for rejection in relation to a plant name. If the
problem relates to a general inability to distinguish (such as a trade mark for “green” or
“beautiful”), refer to Part 23 of this Manual for more information.
The purpose of a trade mark is to distinguish the goods or services of one trader from those
of another. To achieve this, a proposed trade mark for plants or plant material should be
•
applied to a number of different plants or,
•
if applied to a single plant, always applied in conjunction with the accepted scientific
and variety names for that plant.
The Applicant could provide evidence in declaratory form to overcome a ground for rejection
under sections 41(3) or 41(4). While it is unlikely that evidence could overcome the problem
in the conventional sense of examination, particularly in relation to s41(3), it may be possible
to accept the trade mark with a condition of registration if the evidence demonstrates use of
a trade mark in conjunction with genus, species and variety name information.
Example:
•
A trade mark application for DELTA DAWN is filed in Class 31 for roses.
•
Research suggests that ‘Delta Dawn’ is the name of a particular variety of Rosa.
•
The applicant’s evidence in response to the s41(3) gfr shows the trade mark
appearing as, for example:
•
DELTA DAWN
DELTA DAWN
DELTA DAWN
Rosa ‘Percy’s Pride’
Rosa ‘Sentinel’
Rosa ‘Bob’s Uncle’
The following endorsement would need to be agreed to:
It is a condition of registration that, in use, Rosa varietal names will appear in close
proximity to the words DELTA DAWN in the trade mark.
Note: It would not be necessary to include the conventional endorsement of “evidence
provided under section 41(3/4)”. This is because evidence of the trade mark as applied for is
unlikely to overcome the problem. Rather, evidence of the nature of the use may allow
acceptance. That is, evidence that establishes the nature of the use being unlikely to cause
a consumer to view the trade mark simply as an alternate name.
See Annex 6 for information regarding how to provide evidence of use for plants and plant
material.
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Part 32A
2.4 Section 43: Deception and Confusion
2.4.1 Specific plant material considerations
If a trade mark contains or consists of material that connotes a particular plant variety, it
would be deceptive or confusing if the trade mark was applied to goods which are a different
variety of the same or closely related genus.
For example, if ‘Delta Sunset’ is the name of a particular rose and a trade mark application is
received for DELTA SUNSET for roses, it would be deceptive or confusing if the trade mark
was used on labels for roses that were the ‘Mr Lincoln’ variety rather than ‘Delta Sunset’. In
such a circumstance, a ground for rejection under section 43 is applicable.
Section 43 requires that the connotation is immediate. In the context of plants and plant
material, the average consumer has an awareness of accepted naming conventions and an
expectation of what they will see on labels, packaging and related literature. Industry
professionals, such as retailers or nursery operators, have similar expectations combined
with a greater knowledge of plant varieties. Therefore, the connotation is immediate, and
deception or confusion is likely, if the correct variety name information is lacking.
However, the examiner needs to consider how the plant name appears within the trade mark
as a whole. For example, if the plant name is a dictionary word appearing in a phrase then
connotation may not be immediate.
Confusion is also not as likely if the plant variety connoted in the trade mark and the plants
to which the trade mark will be applied are of an unrelated plant type. For example, a trade
mark used in connection with fruit trees is unlikely to cause confusion if it has a connotation
as the name of a particular rose.
2.4.2 General considerations
Regarding material in a trade mark that is not likely to trigger section 43, trade marks in
Class 31 are treated no differently to trade marks in other classes. That is, a ground for
rejection should not be raised when
•
the trade mark contains a descriptive plant term (e.g. “Dianthus” or ”apples” or
“cuttings”)
and
•
the specification has the scope to encompass that plant material
and
•
the non-descriptive element in the trade mark is not the name of a plant of the
relevant type.
2.4.3 Overcoming a section 43 ground for rejection
2.4.3(a) Amending the goods
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If the trade mark’s claim in Class 31 has sufficient scope, the applicant may amend their
specification to remove the problem goods (either by excluding the plant type or by
restricting the goods to a different plant type/s).
Example:
•
A trade mark application for DELTA is filed in Class 31 for plants.
•
Research shows that ‘Delta’ is the name of particular varieties of Rosa and
Capsicum.
•
A section 43 ground for rejection should be taken as the trade mark claim notionally
includes Rosa and Capsicum plants.
•
To overcome the objection, the applicant could amend their claim to:
•
•
plants, none of the foregoing being of the genera Capsicum or Rosa or
•
plants, [of a type other than the problem genera – e.g.] being plants grown
from bulbs
If the trade mark is a composite1 that has no problems under other parts of the
legislation, the applicant could amend their claim to:
•
plants, being Rosa ‘Delta’ or
•
plants, being Capsicum ‘Delta’ .
Note: If the trade mark connotes a particular variety in many genera, it is preferable for the
owner to refine their claim to the genus/genera and variety/ies of interest. (e.g. “all of the
foregoing being varieties of Gladiolus”). This is in keeping with office practice to ensure that
goods or services are described clearly and accurately.
Amending the specification should only be proposed if the examiner is satisfied that use of
the trade mark will not mislead. Confusion between bulbs, seeds, rootstocks or plants of
different types is highly likely where the purchaser is not familiar with the goods, or where
the appearance of the goods is similar.
2.4.3(b) Examples of use
The Applicant could provide examples of use to overcome a ground for rejection under
section 43. If the examples show that the trade mark is being used in close conjunction with
named varieties of the problem plant type, it may be possible to accept the trade mark with a
condition of registration.
Example:
•
A trade mark application for DELTA DAWN is filed in Class 31 for roses.
•
Research suggests that ‘Delta Dawn’ is the name of a particular variety of Rosa.
•
The trade mark could be accepted if examples of use show the trade mark appearing
as, for example:
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•
DELTA DAWN
DELTA DAWN
DELTA DAWN
Rosa ‘Percy’s Pride’
Rosa ‘Sentinel’
Rosa ‘Bob’s Uncle’
The following endorsement would need to be agreed to:
It is a condition of registration that, in use, Rosa varietal names will appear in close
proximity to the words DELTA DAWN in the trade mark
1. A combination of elements (e.g. words and pictures) that would not be needed by others.
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Part 32A Examination of Trade Marks for Plants (in Class 31)
2.5 Section 44: Comparison of Trade Marks
The usual practice and procedure for section 44 applies to trade marks for plants and plant
material. Words which have a specific meaning to plants or are common to the trade should
be taken into consideration (see parts 2.3.1 and 2.3.2 of this chapter).
The range of goods covered in Class 31 is varied, both in price and the care taken in
selection. The users of the goods are also varied, from domestic consumers to large
businesses.
Examiners should refer to the rules of comparison in Part 26 of this Manual when making a
decision about the degree of similarity between trade marks.
When comparing goods, it is useful to consider when a description may have more than one
meaning. For example, “litter” can refer to “bedding material for animals” or “mulch”.
Therefore, a claim for litter is considered similar goods to mulch, while a claim for litter for
animals is not.
A broad claim for agriculture, horticulture and forestry products is likely to be similar to
most specific items in Class 31 because of the scope of the individual definitions:
•
Agriculture – cultivation of land, including crop-raising, forestry, stock-raising;
farming (products include any items derived from these activities).
•
Horticulture – growing of fruit, vegetables, flowers or ornamental plants (products
include all plants and plant material).
•
Forestry – planting and taking care of forests (products include any items derived
from forests – trees, timber, wood chips, bark mulch, etc).
2.5.1 Similarity of goods within Class 31
The following table can be useful when comparing trade marks that both claim goods in
Class 31.
Fruit or vegetables
Nuts (fruits);
(broad claim)
Specific fruits or vegetables
Specific fruit or
vegetables
Nuts;
Fruit or vegetables
Seeds; Grains; Fruit trees; Plants; Seedlings;
Animal feed
not
similar
Grass; Turf
Trees; Shrubs; Herbs
not
similar
Grass
Seeds; Grains; Plants; Hay; Fodder
similar
Turf
Seeds; Grains; Hay; Fodder
not
similar
Different specific fruit or vegetables
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similar
not
similar
19
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Turf
Plants
similar
Malt for animals
Malt for brewing and distilling
similar
Plants
Flowers; Seeds; Grains; Trees
similar
Plants
Cut flowers; Flower arrangements
not
similar
Seeds; grains
Barley; Oats; Rye; Wheat
similar
Trees
Bulbs; Herbs; Seeds; Grains
not
similar
2.5.2 Overcoming a section 44 ground for rejection
Options are the same as for non-plant trade mark applications.
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Part 32A Examination of Trade Marks for Plants (in Class 31)
Annex 1 - Applicable Sections of the PBR Act
Section 11: General nature of PBR
Subject to sections 16, 17, 18, 19 and 23, PBR in a plant variety is the exclusive right,
subject to this Act, to do, or to license another person to do, the following acts in relation to
propagating material of the variety:
a.
b.
c.
d.
e.
f.
g.
produce or reproduce the material;
condition the material for the purpose of propagation;
offer the material for sale;
sell the material;
import the material;
export the material;
stock the material for the purposes described in paragraph (a), (b), (c), (d), (e) or (f).
Note: In certain circumstances, the right conferred by this section extends to essentially
derived varieties (see section 12), certain dependent plant varieties (see section 13),
harvested material (see section 14) and products obtained from harvested material (see
section 15).
Section 27: Names of new plant varieties
1. If PBR has not been granted in another contracting party in a plant variety before an
application for that right in that variety is made in Australia, the name set out in the
application must comply with subsections (4), (5), (6) and (7).
2. If, before making an application in Australia for PBR in a plant variety, PBR has been
granted in that variety in another contracting party:
a. the name of the variety set out in the Australian application must be the name under
which PBR was first granted in another contracting party; but
b. there may, and, if the name referred to in paragraph (a) does not comply with
subsections (4), (5), (6) and (7) there must, also be included in the application a
synonym, additional to the name of the variety.
3. The synonym must be a name determined in accordance with subsections (4), (5),
(6) and (7) as if the variety had not been the subject of a grant of PBR in another
contracting party.
3A If, before making an application in Australia for PBR in a plant variety, PBR has not
been granted in that variety in another contracting party, a synonym may also be
included in the application.
4.
A name (including a synonym), in respect of a plant variety, must be a word or words
(whether invented or not) with or without the addition of either or both of the following:
a. a letter or letters that do not constitute a word;
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b. a figure or figures.
5. A name (including a synonym), in respect of a plant variety must not:
a. be likely to deceive or cause confusion, including confusion with the name of another
plant variety of the same plant class; or
b. be contrary to law; or
c. contain scandalous or offensive matter; or
d. be prohibited by regulations in force at the time of the application; or
e. be or include a trade mark that is registered, or whose registration is being
sought, under the Trade Marks Act 1995, in respect of live plants, plant cells and
plant tissues. [emphasis added]
6. A name (including a synonym), in respect of a plant variety must comply with the
International Code of Botanical Nomenclature and subsidiary codes.
7. A name (including a synonym), in respect of a plant variety must not consist of, or
include:
a. the name of a natural person living at the time of the application unless the person
has given written consent to the name of the variety; or
b. the name of a natural person who died within the period of 10 years before the
application unless the legal personal representative of the person has given
written consent to the name of the variety; or
c. the name of a corporation or other organisation, unless the corporation or other
organisation has given its written consent to the name of the variety.
Section 53: Infringement of PBR
1. Subject to sections 16, 17, 18, 19 and 23, PBR in a plant variety is infringed by:
a. a person doing, without, or otherwise than in accordance with, authorisation from the grantee
of the right, an act referred to in a paragraph of section 11 in respect of the variety or of a
dependent variety; or
b. a person claiming, without, or otherwise than in accordance with, authorisation
from the grantee of that right, the right to do an act referred to in a paragraph of
section 11 in respect of that variety or of a dependent variety; or
c. a person using a name of the variety that is entered in the Register in relation to:
i.
any other plant variety of the same plant class; or
ii.
a plant of any other variety of the same plant class.
1A To avoid doubt, an infringement of PBR in a plant variety under paragraph (1)(c) can
include using a synonym in relation to the name of a plant variety, if that synonym is
entered in the Register under paragraph 46(1)(b).
2.
If a plant variety (the derived variety) has been declared to be an essentially derived
variety of another plant variety (the initial variety), the reference in paragraphs (1)(a) and (b)
to authorisation from the grantee of the right means, in relation to the derived variety,
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Part 32A Examination of Trade Marks for Plants (in Class 31)
authorisation from both the grantee of PBR in the derived variety and from the grantee of
PBR in the initial variety.
3. In this section, a reference to the grantee of PBR in a plant variety includes a
reference to a person who has, by assignment or transmission, become the holder of
that right.
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Part 32A
Annex 2 - Applicable Sections of the UPOV
Convention
International Convention for the Protection of New Varieties of Plants
CHAPTER VI
VARIETY DENOMINATION
Article 20
Variety Denomination
1. [Designation of varieties by denominations; use of the denomination]
a. The variety shall be designated by a denomination which will be its generic
designation.
b. Each Contracting Party shall ensure that, subject to paragraph (4), no rights in
the designation registered as the denomination of the variety shall hamper the
free use of the denomination in connection with the variety, even after the
expiration of the breeder’s right.
2. [Characteristics of the denomination] The denomination must enable the variety
to be identified. It may not consist solely of figures except where this is an
established practice for designating varieties. It must not be liable to mislead or
to cause confusion concerning the characteristics, value or identity of the variety
or the identity of the breeder. In particular, it must be different from every
denomination which designates, in the territory of any Contracting Party, an
existing variety of the same plant species or of a closely related species.
3. [Registration of the denomination] The denomination of the variety shall be submitted
by the breeder to the authority. If it is found that the denomination does not satisfy
the requirements of paragraph (2), the authority shall refuse to register it and shall
require the 14 breeder to propose another denomination within a prescribed period.
The denomination shall be registered by the authority at the same time as the
breeder’s right is granted.
4.
[Prior rights of third persons] Prior rights of third persons shall not be affected. If, by
reason of a prior right, the use of the denomination of a variety is forbidden to a person who,
in accordance with the provisions of paragraph (7), is obliged to use it, the authority shall
require the breeder to submit another denomination for the variety.
5.
[Same denomination in all Contracting Parties] A variety must be submitted to all
Contracting Parties under the same denomination. The authority of each Contracting Party
shall register the denomination so submitted, unless it considers the denomination
unsuitable within its territory. In the latter case, it shall require the breeder to submit another
denomination.
6.
[Information among the authorities of Contracting Parties] The authority of a
Contracting Party shall ensure that the authorities of all the other Contracting Parties are
informed of matters concerning variety denominations, in particular the submission,
registration and cancellation of denominations. Any authority may address its observations, if
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Part 32A Examination of Trade Marks for Plants (in Class 31)
any, on the registration of a denomination to the authority which communicated that
denomination.
7.
[Obligation to use the denomination] Any person who, within the territory of one of the
Contracting Parties, offers for sale or markets propagating material of a variety protected
within the said territory shall be obliged to use the denomination of that variety, even after
the expiration of the breeder’s right in that variety, except where, in accordance with the
provisions of paragraph (4), prior rights prevent such use.
8.
[Indications used in association with denominations] When a variety is offered for
sale or marketed, it shall be permitted to associate a trademark, trade name or other similar
indication with a registered variety denomination. If such an indication is so associated, the
denomination must nevertheless be easily recognizable.
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Part 32A
Annex 3 - Applicable Sections of the ICNCP
International Code of Nomenclature for Cultivated Plants
8th Ed., 2009:
Divisions I: Principles
Principle 4
Names of plants governed by this Code must be universally and freely available for use by
any person to denote a taxon.
Principle 6
The practice of applying trade designations as marketing devices in addition to properly
established names of taxa of plants is not supported by this Code; such designations are not
to be recognized as being names regulated under this Code.
Plants are sometimes marketed using trademarks. Such trademarks are the intellectual
property of a person or corporate body and are not therefore freely available for any person
to use; consequently, they cannot be considered as names regulated under this Code.
Article 13: Trade Designations
1.
13.1 A trade designation is not a name regulated under this Code but
is a device that has been used for marketing a cultivar, Group or grex in place of
its accepted name.
2.
Ex. 1. In 1988, UK Plant Breeders' Rights Grant No 3743 was issued
for a rose with the cultivar epithet ‘Korlanum’. The cultivar is marketed as “rose
Surrey”, “Rose Sommerwind”, and “rose Vent d’Été” in different countries. These
are not names but are to be regarded as being trade designations and may be
written rose SURREY (‘Korlanum’), Rose SOMMERWIND (‘Korlanum’), and rose
VENT D’ÉTÉ (‘Korlanum’) respectively.
3.
Ex. 2. The name Syringa vulgaris ‘Andenken an Ludwig Späth’ was
established in 1883 and under the Rules of this Code is the accepted name for
the cultivar. Due to prolonged use of the shortened form “Ludwig Spaeth” by
North American nurserymen, the International Cultivar Registration Authority for
lilacs has designated S. vulgaris LUDWIG SPAETH as being a trade designation
for the cultivar.
4.
Ex. 3. ATTENTION! oak is not a cultivar name; however, it contains a
US registered trademark (Reg. No 1508479) originally owned by Willet N.
Wandell and is used as a trade designation to market Quercus robur ‘Wandell’
which name was itself established in 1989 on grant to Mr Wandell of US Plant
Patent No 6746.
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Part 32A Examination of Trade Marks for Plants (in Class 31)
5.
13.2 A trade designation is not to be confused with a synonym. For
the purposes of this Code a synonym is an established name (Art. 10.1) that is not
the accepted name (Art. 11.1).
Article 17: Trade Designation Status
1.
17.1 Trade designations may not be placed within demarcating
quotation marks.
2.
17.2 If cited, trade designations must always be accompanied by their
accepted names.
3.
17.3 If cited, trade designations must always be distinguished
typographically from cultivar, Group and grex epithets.
APPENDIX X
TRADE DESIGNATIONS
1.
(a) In distinguishing a trade designation typographically from an
accepted name the trade designation may, for example, be placed in capitals e.g.
Dianthus FANTASIA is the trade designation for the cultivar with the accepted
name Dianthus 'Londaison'. The use of any other typographical device to make
this distinction should avoid anything that might cause confusion with indications
of cultivar, Group or grex status, so for example the use of single or double quotes
is not recommended.
2.
(b) When citing a trade designation together with an accepted name,
whilst it is preferable to list the accepted name first, the order in which they are
quoted may depend on the circumstances; it is recognized that users of a name
may be more familiar with the trade designation. Thus Dianthus 'Londaison'
FANTASIA or Dianthus FANTASIA 'Londaison' can both be used. Placing the
second element within brackets is another accepted style of presentation e.g.
Dianthus 'Londaison' (FANTASIA) or Dianthus FANTASIA ('Londaison').
3.
(g) In some circumstances it may be necessary to record the use of
the same word or words both as a synonym and as a trade designation for the
same plant. This may occur when a name has been established prior to the plant
being granted statutory rights (e.g. Plant Breeders' Rights) and when a different
name has been used for the same plant in the grant of rights. The latter has to
become the accepted name of the plant and the earlier established name a
synonym. However, if the synonym is then taken up as a marketing device for that
plant it should then to be treated as a trade designation. This treatment applies
even if the earlier established name has been registered by an ICRA. Another
example is given under Art. 13.2.
4.
(h) Some trade designations may consist of or contain registered
trademarks. A registered trademark is one that has been formally accepted by a
statutory trademark authority and is usually distinguished by the international
symbol ®. The use of this symbol is not compulsory. Registered trademarks are
the intellectual property of a person or some corporate body and are therefore not
freely available for any person to use; consequently they cannot be considered as
or as part of names.
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5.
(i) Most trademarks are applicable over a restricted class of goods,
so thus a trademark registered for use in a class covering machines and machine
tools may still be acceptable for use as part of a plant name.
Art. 8. Note 2 Anyone using a trademark for a cultivar should be aware of the risk of
the trademark becoming generic unless an accepted name is also given when
marketing the cultivar. The trademark should always be accompanied by an accepted
name.
[emphasis added]
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Part 32A Examination of Trade Marks for Plants (in Class 31)
Annex 4 - An Example of a PBR Letter of Consent
The Registrar of Trade Marks
IP Australia
PO Box 200
WODEN ACT 2606
Dear Sir/Madam:
RE: Trade Mark Application No. 1654321 in the name of
XYZ TREE GROWERS PTY LTD
As owners of the Plant Breeder’s Right for:
Genus:
Malus domestica
Variety:
Red Sunset
Synonym:
ABCENT RS
Status:
Granted
we hereby consent to the use and registration of the words RED SUNSET in a trade mark in
Class 31 by XYZ Tree Growers Pty Ltd filed under application 1654321 in respect of:
“Fruit trees”.
Yours sincerely,
Fred Y Smith
Fred Y. Smith
Director
ABC ENTERPRISES PTY LTD
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Part 32A
Annex 5 - Case Law Summaries
Wheatcroft Bros Ltd’s Trade Marks (1954) 71 RPC 43
The Wheatcroft case considered the inability of varietal names to also function as trade
marks.
Facts
An application was made by Wisbech Plant Coy Ld to rectify the Register of Trade Marks by
expunging from it eleven entries in the name of Wheatcroft Brothers Ld., which were all word
marks registered for roses, rose cuttings, rose trees or rose plants. The words registered by
Wheatcroft as trade marks, at the date of trade mark registration, either were already
entered on the National Rose Society (N.R.S.) Register as the names of new varieties of
rose, or were intended to be entered, and were intended for use as the only identification of
those varieties.
Held
Justice Lloyd-Jacob found that an intention to use the words as variety names was
inconsistent with an intention to use them as distinguishing the goods of a particular person,
and that they were neither distinctive nor capable of becoming distinctive. He concluded that,
in the absence of evidence of distinctiveness, the registrations were wrongly made. The use
of any name entered on the N.R.S. Register as imparting a reference to trade origin would
inevitably cause confusion and therefore, the registrations wrongly remained on the Trade
Mark Register. He ordered that the Register be rectified by the removal of all the marks in
the case.
"Ogen" Trade Mark [1977] RPC 529
Ogen considered the inability of a variety name to also function as a trade mark.
Facts
P. Weiser (London) Limited (the applicants) lodged applications for rectification of the
register by removal of the trade marks 'Ogen' and a composite label mark incorporating the
words, 'Ogen Melon', or alternatively in the case of 'Ogen Melons', for variation of the entry
by including a disclaimer to the exclusive use of the word 'Ogen' appearing on the trade
mark. Both registrations are registered in the name of Agrexco Agricultural Company Limited
(the registered proprietors) in respect of fresh melons.
The applicant's evidence showed that both before and after registration, 'Ogen' had been
used as a varietal name for melons and melon seeds in premises unconnected with the
registered proprietors, and that the registered proprietors had themselves used 'Ogen' as a
varietal name. The evidence showed an entry in the Plant Variety Rights Office in the UK
listing "Ogen" as a variety of melon. The registered proprietors argued that since registration
'Ogen' had not been used as a varietal name and that they had taken steps to prevent
similar use by others.
Held
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Part 32A Examination of Trade Marks for Plants (in Class 31)
Mr Moorby found that by the date of registration, 'Ogen' had become established as a
varietal name for melons and not simply as a mark exclusively identifying the registered
proprietors' produce. He concluded that the use of the 'Ogen' mark to indicate a particular
trade origin of melons would be likely to deceive and cause confusion, and therefore the
mark remained on the register without sufficient cause. He ordered that the “Ogen" mark be
removed from the register, and that the “Ogen Melon" mark be allowed to remain on the
register subject to a disclaimer and a limitation of the goods to 'fresh ogen melons'.
P.A and E.V Strauss [1999], 47 IPR 191 (“Tropical Birch”)
The Tropical Birch decision considered a mark indicating the product in general.
Facts
The applicants applied for the registration of the words "tropical birch" as a trade mark in
class 31 in respect of plants. The examiner objected to the registration on the ground that
the mark was not capable of distinguishing the goods of the applicant from those of other
traders. The applicants filed evidence of use but the examiner maintained the objection. The
applicant requested a hearing.
Held
Hearing Officer Williams found that the words "tropical birch" had a very clear meaning and
were utterly descriptive even though a thing to match the description was not necessarily
known to exist. He further determined that the words were not a fanciful association of ideas
and if a tropical variety of birch was found others may properly have wished to use the words
to describe it. The words lacked any inherent ability to distinguish and the evidence
submitted by the applicants was not sufficient to show that the trade mark was in fact
distinctive at the date of the application as the words appeared to have been used to
indicate the variety of the plants rather than their trade origin. The application was rejected.
SFR Holdings Inc [2013] ATMO 77 (“Seadwarf”)
The Seadwarf decision considered a mark as a whole referring to the goods and lacking the
ability to develop a secondary meaning in relation to the goods.
Facts
The applicant applied for the registration of the words "SEADWARF PASPALUM SDX-1 " as
a trade mark in class 31 in respect of turf and grass seeds. The examiner objected to the
registration on the grounds that the mark was not capable of distinguishing the goods of the
applicant from those of other traders, and that it would mislead or confuse if used on non
SDX-1 varieties of Paspalum.
The applicant refined their goods to “all being plants or plant material of the variety SDX-1 of
the genus Paspalum”. This allowed the s43 ground to be withdrawn but the s41 ground was
maintained. The applicant requested a hearing.
Held
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Hearing Officer Windsor found that “the primary descriptive meaning of the Trade Mark is
that of a particular kind of Paspalum grass”. The application was rejected.
Practice notes
At the time of the decision, importance was placed on SEADWARF being a published trade
reference for the PBR protected ‘SDX-1’ variety of Seashore Paspalum (Paspalum
vaginatum Swartz).
As noted at part 2.1 of this revised chapter, a trade reference has no regulatory significance
under the PBR Act. The trade mark could be considered acceptable as it appears to
differentiate a trade reference from genus and variety descriptions (see 2.3.1(c) ). However,
this still needs to be considered in the context of market place use, identified by research
conducted as an ordinary part of plant trade mark examination.
The Hearings decision explained that SEADWARF PASPAPALUM SDX-1 was not a trade
mark being used in the market place. References showed variations of “Seadwarf Seashore
Paspalum” and “ ‘SeaDwarf’ (SDX-1)”, both of which resemble accepted plant naming
conventions. Further, Hearing Officer Windsor was directed to a website by the applicant
where “there was no mention of the plant patent or the PBR variety SDX-1” and, despite use
of the ® symbol, SEADWARF was the only name one could possibly put to the variety of
Paspalum being promoted.
Market place use suggested the intention to establish SEADWARF as an alternate name for
SDX-1, rather than as a trade source for the variety. An alternate name is one that should be
freely available for others to use. In the context of the research (and the applicant’s
submissions during the Hearing process), SEADWARF PASPALUM SDX-1 presents as
“alternate name/genus/variety” rather than “trade source/genus/variety”. As such, the
primary descriptive meaning of the Trade Mark is that of a particular kind of Paspalum grass.
Mastronardi Produce Ltd v Registrar of Trade Marks [2014] FCA 1021 (“ZIMA”)
Facts
The applicant applied for the registration of the word "ZIMA" as a trade mark in class 31 in
respect of tomatoes. The examiner objected to the registration on the grounds that the mark
was not capable of distinguishing the goods of the applicant from those of other traders, and
that it would mislead or confuse if used on non ZIMA varieties of tomato.
The objections were maintained over 2 further reports, after which the Applicant requested a
hearing.
Held
Hearing Officer Windsor found that ZIMA “is the name of a cultivated variety of tomato and it
is not adapted to distinguish the Applicant’s tomatoes from the similar goods of other traders.
Similarly, … use in respect of tomatoes not of the specific cultivated variety is likely to cause
deception or confusion”. The application was rejected.
Appeal
The Applicant appealed to the Federal Court where Justice Gordon found in their favour.
Practice notes
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Part 32A Examination of Trade Marks for Plants (in Class 31)
The final ZIMA outcome relied on a particular set of circumstances:
a. fresh tomatoes generally being sold by category rather than varietal name, and
b. the Applicant’s reference to ZIMA representing a number of different varieties, each
with their own alpha numeric name, that could collectively be described by others as
inter alia “sweet, golden snacking tomatoes”.
Each trade mark application is examined on its own merit in the context of the current market
place. Examination should, therefore, carefully consider how similar goods are usually sold
or referred to by traders and consumers.
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Part 32A
Annex 6 - How to Supply Evidence of Use of a Trade
Mark for Plants and/or Plant Material
Note: This annex relates to section 41 only. For information relating to evidence
requirements for conflicting trade marks, refer to Part 28 of this Manual.
HOW TO SUPPLY EVIDENCE OF USE OF A TRADE MARK FOR PLANTS AND/OR
PLANT MATERIAL
Under section 41 of the Trade Marks Act 1995
What is
“evidence of
use”?
In my report I have explained some problems with your trade mark. You
might be able to overcome these problems if you supply evidence of use
under section 41.
“Evidence of use” is usually information about:
•
Use already being made of your trade mark in Australia or
overseas: The information must show that your trade mark has
become, or is likely to become, identified as a trade source for
your goods and not simply an alternate name for the goods
themselves.
In some cases it is information about:
•
Documented preparations to begin use of your trade mark in
Australia. The information must show that your trade mark has the
potential to become identified as a trade source for your goods.
This will be indicated by specific, documented plans which you
have made to use the trade mark to sell your goods.
PLEASE NOTE: In connection with plant material, “trade name” is not
synonymous with “trade mark”. This is because a trade name is often
intended to be used with only a single plant variety and can become no
more than an alternative description for the goods.
Evidence should show how the trade mark appears in connection with
relevant genus, species and variety name information.
How must you
supply the
evidence?
Evidence must be supplied as a declaration and should be submitted in
electronic format via eServices. Please follow the guidelines on file types
and file sizes when submitting via eServices. Using eServices is both
secure and convenient.
The declaration must be from:
•
you, if you are the applicant, OR
•
a principal officer or other authorised employee of the company
(e.g. a director) if the applicant is a company, OR
•
someone you have authorised to make the declaration on your
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Part 32A Examination of Trade Marks for Plants (in Class 31)
behalf (e.g. a lawyer or trade mark attorney).
The declaration must:
•
be headed with the title of the matter for which the declaration is
made; AND
•
be expressed in the first person; AND
•
state the name and address of the person making the declaration;
AND
•
if the declaration is made on behalf of a company, state the name
and address of the company and the position in the company of
the person making the declaration; AND
•
state the date on which the declaration is made; AND
•
state the place at which the declaration is made; AND
•
be divided into consecutively numbered paragraphs, confined to
one subject where practicable; AND
•
state that the person making the declaration believes the
declaration to be true and correct; AND
•
be signed by the person making the declaration.
The declaration form available via eServices incorporates the above
points.
PLEASE NOTE: Providing clear digital images of any objects bearing the
trade mark will be as effective as providing the objects themselves.
What
information
must the
evidence
contain?
The declaration must contain:
•
The name of the person or organisation using or intending to use
the trade mark:
•
you or your company, OR
•
someone authorised to use the trade mark, OR
•
a person or company from whom you acquired the trade mark (a
predecessor in title).
For evidence of actual use the declaration should include:
•
A brief history of the trade mark including:
•
The date when the trade mark was first used to sell goods
(please give the year and, if possible, the month).
•
The area/s where the trade mark has been used (please give
States or regions in Australia, and/or countries overseas).
•
The goods sold using the trade mark.
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Part 32A
•
Examples of how the trade mark has been used to sell those
goods (please refer to and attach digital images of packaging
and/or advertising and/or promotional materials using
eServices).
•
The annual figures in Australian dollars spent on advertising
and promoting the trade mark.
•
The annual turnover figures in Australian dollars for the goods
sold using the trade mark. These figures must cover only the
goods in your application.
•
Any other information or materials which will help show how
the trade mark has been used (please refer to and attach
digital images of these materials using eServices).
For evidence of intended use, the declaration should include:
•
Comprehensive details of business plans and/or other documents
demonstrating a definite intention to use the trade mark (please
refer to and attach copies of these documents).
•
Details of the goods or services this planned use relates to.
•
Figures in Australian dollars for any costs already incurred in
preparing to use the trade mark.
•
Any other information or materials which will help show how the
trade mark is intended to be used (please refer to and attach
copies of these materials using eServices).
Can you
prepare the
evidence
yourself?
You may prepare and supply evidence of use yourself or a trade mark
attorney would be able to assist you.
Will the
information
you supply be
treated as
confidential?
IP Australia will accept your declaration in confidence. IP Australia will not
accept an accompanying letter in confidence.
Will the
information
you supply be
given to
anyone else?
Other people may request access to information you have provided.
Please take into account that:
Please do not put any information which you consider to be confidential
into an accompanying letter.
•
Letters become available for public inspection.
•
Declarations may be available for public inspection. Copies of
declarations may also be requested under the Freedom of
Information Act. If this occurs, IP Australia may seek your
comments before any release of your declaration.
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