4.4.2 Plant Trade Marks

Also in this Chapter:

• 4.4.1 Naming Conventions, Synonyms and Acronyms

Key Legislation:

Plant Breeder's Rights Act 1994:

• s27 Names of new plant varieties

Trade Marks Act 1995

On this Page

• Overview
• Registered vs ‘common law’ trade marks
• ‘Kinds’ of registered trade marks
• Differentiation of a denomination from a trade mark

Overview

As stated in Section 27(5)(e) of the Plant Breeder's Rights Act 1994, plant variety denominations or names (which includes synonyms) must not 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. 

The requirement that names and synonyms must not “be or include a trade mark” is specific and therefore can be interpreted literally as it is not derogated by other general sections of the Act (Generalia specialibus non derogant). Accordingly, confusion with a trade mark does not fall within the examination of Section 27(5)(a) of the Act, which states that names or synonyms of plant varieties must not be likely to deceive or cause confusion. 

Registered vs ‘common law’ trade marks

The restrictions imposed by s27(5)(e) only apply to trade marks that are registered or whose registration is being sought under the Trade Marks Act 1995. However, where a common law trademark (often denoted by the use of the symbol ™) is identified, and its use as either the denomination or synonym might cause confusion, the applicant should be encouraged to propose a new denomination or synonym under Section 27(5)(a) of the PBR Act. PBR examiners should ensure that the ™ symbol is not accepted as part of a denomination or synonym.

‘Kinds’ of registered trade marks

Where a trade mark consists of a device (i.e. one or more word(s) and an image or a word(s) in a particular "get up") it is not considered to conflict with a proposed variety denomination using that same word or words provided that the denomination is not associated with the relevant "get up". 

Example: EGA is a trade mark in class 31. However, the trade mark is associated with a device. In this particular case the device is an image with the word EGA in a particular "get up". As such, it is not seen to conflict with the proposed variety denomination ‘EGA Castle Rock’ as the denomination does not contain the EGA trade mark of which the image is an integral part.

Where the 'kind' of mark in the Australian Trademark Search Database is a word or words and the trade mark is not associated with an image or "get up", a proposed variety denomination cannot be accepted if it includes the word or all the words of the trade mark and the trade mark covers live plants, plant cells or plant tissues.

Other kinds of marks which may be indicated in the Australian Trademark Search Database include fancies, colours, shapes, sounds and scents. 

On 14 October 2010 the Trade Mark office advised that it would be unnecessary to search for live plants, plant cells and plant tissues in trade mark classes other than class 31. 

Where information about the kind is missing, the Trade Mark office has advised that the mark has never been registered or protection has lapsed and therefore can be ignored for the purposes of s27(5)(e).

Differentiation of a denomination from a trade mark

Provided all other criteria are met including in relation to live plant material, a PBR examiner can accept a proposed denomination or synonym that is distinguished from a trade mark (where the trade mark does not form almost the entire variety denomination) by the inclusion of punctuation such as a hyphen or the removal of a space, provided that the added hyphen or removed space themselves do not form the entirety of the difference between the trade mark and the proposed denomination. Some non-limiting examples are presented below. 

¹The inclusion of the letters “ARG” is considered to introduce a significant new element which alters the perception of the word and distinguishes it visually and phonetically from the trade mark “Sunrise”.

²The proposed denomination and trade mark are considered to be phonetically the same. However, the two words differ in spelling so the proposed denomination “Savvy” is considered sufficiently differentiated from the trade mark “SAVII”. 

Applicants and their representatives may also find it useful to search proposed denominations or synonyms for their variety in Australian trade mark databases. IP Australia provides guidance for the public on how to search existing trade marks, including examples of proposed trade marks that pose a danger of confusion with existing marks.