2.3 Section 41: Capacity to Distinguish

Date Published

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 The repealed section 41 is set out in full in Annex A1 of Part 22 of this Manual.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

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.

Mastronardi Produce Ltd (“ZIMA”) highlighted that “variety” can be a loose term in the fresh food retail world. In the context of plant material and plant mark examination, however, “variety” has specific meaning as the name of a particular member of a species within a genus.

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, 6th Ed., comments on the difficulty of trade marking the “name of the product” (at [20.560]). Particularly:

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".
(re Ag-id Pty Ltd (2005) 68 IPR 153; [2006] AIPC 92-154)

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.**

*(see case law referred to below)
**(re Heritage Seeds Pty Ltd [2007] ATMO 4)

The inability of a plant name to function as a trade mark was also considered in:

  • 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”)
  • Buhanan Turf Supplies Pty Ltd (2015) FCA 756 (“Sir Walter”)

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.

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 “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.

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”.

No

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.

The trade mark resembles something that other traders may think to use.

S41(4)

The trade mark as a whole is presented in a conventional naming format but research does not identify a variety in the market place.

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.

S41(4)

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

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.

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

Rosa ‘Percy’s Pride’

DELTA DAWN

Rosa ‘Sentinel’

DELTA DAWN

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.