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, if the trade mark contains or consists of a known variety name, the connotation may be immediate, and deception or confusion is likely if the trade mark is used on a different variety of the same or a closely related genus.

However, the examiner needs to consider how the variety 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, other than a variety or synonym (e.g. ”apples” or “cuttings”)
  
  and
• the specification has the scope to encompass goods described by that term.
  
  

However, where there is a connotation present within the trade mark that is directly contradicted by the specification, there is a high likelihood of consumers being deceived or confused and s43 grounds for rejection would be appropriate. See the relevant practice at Part 29.4.10.

2.4.3 Overcoming a section 43 ground for rejection

2.4.3(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).  

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:

• 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.​​​​​​​​​​​​​​

1.  A combination of elements (e.g. words and pictures) that would not be needed by others.