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

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

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”)

ZIMA considered how fresh fruit and vegetables are usually sold or referred to.

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

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.

Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756

“Sir Walter” considered the trade mark rights of a PBR Title Holder.

Facts

The applicant applied for the registration of the words “Sir Walter” as a trade mark in Class 31 in respect of turf grass. At the time of filing, the applicant was the Title Holder of a PBR for the ‘Sir Walter’ variety of Buffalo Grass. 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 other members of the relevant genus.

The objections were maintained over 2 further reports, after which the applicant requested a hearing.

Held

Hearing Officer Wilson found that “the Applicant has coined the name ‘Sir Walter’ for its grass, and has shown significant use by it and its licensees. Nonethless, ‘Sir Walter’ is apt to be the name of the grass, not a trade mark. Further, I am not satisfied by the submission and evidence provided by the Applicant that the Trade Mark, when used in connection with Sir Walter grass enables it to distinguish the Applicant’s goods in class 31 as being those of the applicant”.

Appeal

The applicant appealed to the Federal Court where Justice Yates dismissed the appeal.

Practice notes

PBR protection grants the Title Holder the exclusive right to deal with the varietal name in certain ways for a fixed period of time. The significance of the name does not change and others should be able to refer to the apt name when the plant enters the public domain upon expiry of the PBR.