1. Introduction

Date Published

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 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)

Removed – Not Renewed

Expired

The maximum term of PBR has run out and the variety is no longer protected.

No equivalent – the closest is “Removed – Not Renewed”.

1.4 Glossary of terms used in this chapter

Genus (pl. genera)

A taxonomic grouping of similar species.

Similar genera are grouped into families.

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 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.