32A.2.1 Section 42: Contrary to Law

Date Published 20 Apr 2022

The PBR Act includes the following sections relevant to the consideration of section 42 of the Trade Marks Act 1995:

Section 27: Names of new plant varieties

(5) A name (including a synonym), in respect of a plant variety must not:

(e) 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.

Section 53: Infringement of PBR

(1) Subject to sections 16, 17, 18, 19 and 23, PBR in a plant variety is infringed by:

(i) any other plant variety of the same plant class; or

(ii) a plant of any other variety of the same plant class.

1A To avoid doubt, an infringement of PBR in a plant variety under paragraph (1)(c) can include using a synonym in relation to the name of a plant variety, if that synonym is entered in the Register under paragraph 46(1)(b).

A ground for rejection under section 42 is applicable in the following circumstances:

(a) Use of the trade mark would be contrary to Section 27(5)(e) and/or Section 53(1)(c) of the PBR Act in relation to a plant variety name or synonym of an accepted or granted PBR

AND

(b) the claimed Class 31 goods are notionally of the plant type for which the PBR is listed

AND

2.1.1 Determining if a trade mark is contrary to law on the basis of a PBR variety or synonym

Assuming conditions (b) and (c) above apply, there are two considerations to determine (a):

Is the trade mark the same as, or wholly contained in, the PBR variety/synonym? If so, then the trade mark causes the existing PBR variety/synonym to “be or contain” a trade mark, contravening section 27(5)(e) of the PBR Act.
Is the PBR variety/synonym present in the trade mark in such a way that it retains its meaning as a variety? If so, then use of the trade mark would infringe the PBR right under section 53(1)(c) of the PBR Act.

2.1.1(a) Plain word trade marks

Variety names and synonyms appear in plain typeface only on the PBR register. For plain word trade marks, both the inquiries above are therefore applicable. That is, the plain word trade mark could be the same as, or wholly contained in the PBR variety/synonym (contravening section 27(5)(e) of the PBR Act), and/or be similar enough to, or include the PBR variety/synonym in a meaningful way, such that use of the trade mark would infringe the PBR under section 53(1)(c) of the PBR Act.

The trade mark and the PBR plant variety name or synonym should be considered as wholes, and the nature of any additional words and the effect on the whole taken into account.

The following are examples of plain word trade marks and PBR varieties/synonyms applying the s42 considerations:

Trade mark under examination	Existing PBR variety/synonym	Contrary to law?
DRA-MA	DRA	No – the whole trade mark is not the same as, or contained in the PBR variety, so is not contrary to s27(5)(e). Although the PBR variety is contained in the trade mark, the trade mark as a whole does not present the DRA element solus as a variety name, so use would not be contrary to s53(1)(c)
DRA-MA	DRAMA	Yes – although the trade mark has a slight difference it still presents as the word DRAMA, and is contrary to both s27(5)(e) and s53(1)(c)
DRAMO	DRAMA	No – the trade mark is a different word, and is not contrary to either s27(5)(e) or s53(1)(c)
DRA	PINK DRA	Yes – the trade mark causes the existing PBR variety to include a trade mark, contrary to s27(5)(e) of the PBR Act.
DRA	DRA PINK	Yes – the trade mark causes the existing PBR variety to include a trade mark, contrary to s27(5)(e) of the PBR Act.
DRA PINK	DRA	Yes – the additional word in the trade mark is a colour descriptor common to the trade, so DRA retains its meaning as a variety name, and use would be contrary to s53(1)(c).
PINK DRA	DRA	Yes – As above
DRAMA QUEEN	DRAMA	No – the whole trade mark is not the same as, or included in, the PBR variety, so is not contrary to s27(5)(e). Although the PBR variety is contained in the trade mark, the phrase DRAMA QUEEN should be taken as a whole, and the word DRAMA does not retain meaning as a PBR variety, so use would not be contrary to s53(1)(c).
PINK DRAs	PINK DRA	Yes – although the trade mark is pluralised, and hence not wholly included in the PBR variety, it is essentially the same and contravenes both s27(5)(e) and s53(1)(c) of the PBR Act.
PYNQ DRA	PINK DRA	No – the trade mark is not the same as, or included in, the PBR variety, so is not contrary to s27(5)(e). The adaptation in the trade mark is sufficient to remove its meaning as the PBR variety, so use would not be contrary to s53(1)(c).
LIVERPOOL NURSERY DRA	DRA	Yes – the LIVERPOOL NURSERY element is not distinctive in nature, and DRA is a separate element with meaning as a variety, contrary to s53(1)(c).

2.1.1(b) Composite or fancy trade marks

Since variety names and synonyms appear in plain typeface only on the PBR register, a composite trade mark will not be regarded as causing an existing PBR variety/synonym to “be or include” a trade mark. Therefore, the first inquiry regarding section s27(5)(e) does not apply. The examiner will only need to consider the second inquiry; whether the appearance of a PBR variety or synonym in a trade mark is meaningful and would therefore infringe the PBR in respect to section 53(1)(c) of the PBR Act. A meaningful appearance is most likely to occur if the PBR variety/synonym appears as a separate element, or if use of a particular font or embellishment does not render the PBR variety/synonym unrecognisable.

The following are examples of composite trade marks and PBR varieties/synonyms applying the s42 considerations:

Trade mark under examination	Existing PBR variety/synonym	Contrary to law?
	DRA	Yes – the word DRA appears as a separate word element in the trade mark, retains its meaning as the PBR variety, and is contrary to s53(1)(c).
	DRA BLACK ROCK	No – the whole PBR variety is not present in the trade mark, so DRA does not carry meaning as a PBR variety, and is not contrary tos53(1)(c).
	DRA	Yes – the word DRA appears as a separate word element in the trade mark, retains its meaning as the PBR variety, and is contrary to s53(1)(c).
	DRA	Yes – the word DRA appears as a separate word element in the trade mark, retains its meaning as the PBR variety, and is contrary to s53(1)(c).

A ground for rejection is not applicable in relation to a PBR trade reference. This is because a trade reference has no regulatory significance under the PBR Act. However, a trade reference may attract a ground for rejection under sections 41 and/or 43 of the TM Act if research shows market place use to be of an alternate name for the plant material rather than an identifier of trade source. (For more information, see part 2.3.1(c) of this chapter)

A PBR result with a status of expired would attract a ground for rejection under sections 41 and/or 43 as the name has been established. Results with a status of refused, withdrawn or terminated may also attract a ground for rejection under sections 41 and/or 43 if research shows market place use or recognition in another jurisdiction.

2.1.2 Overcoming a section 42 ground for rejection

2.1.2(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 goods of a similar type to the PBR plant type (either by excluding the offending goods or by restricting to goods that don’t encompass the offending goods).

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 there is an accepted or granted PBR for ‘Golden Dawn’ for Narcissus.
A section 42 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 there is an accepted or granted PBR for ‘Delta Day’ for Pennisetum glaucum (Pearl Millet).
A section 42 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.

2.1.2(b) Change in status

If the PBR status changes from accepted to withdrawn, terminated or expired, the variety no longer has provisional protection and the section 42 ground for rejection can be withdrawn.

2.1.2(c) Letter of consent

The trade mark application may be accepted if the applicant provides a Letter of Consent from the PBR title holder, agreeing to the use and registration of the PBR variety name or synonym as part of a trade mark for the offending goods (see s11 of the PBR Act).

In this circumstance, the owner of the trade mark will need to agree to an endorsement to that effect. The goods will also need to be restricted to accord with the plant variety name or synonym.

For example:

It is a condition of registration that the applicant has the consent of the PBR titleholder to use the <plant variety name/synonym> ‘xxxx’ in a trade mark for the duration of the PBR right.

and

<Specification>; all the foregoing being plants or plant material of <genus> < variety name/synonym ‘xxxx’>

Note: In instances where an application has received a ground for rejection under more than one section of trade mark legislation, a Letter of Consent will not overcome a ground for rejection under sections 41 or 43.

See Annex 4 for an example of a Letter of Consent.

1. Words or phrases in plain typeface with no embellishment

Amended Reasons

Amended Reason	Date Amended
Update hyperlinks	20 Apr 2022
Update hyperlinks	20 Apr 2022
Update hyperlinks	20 Apr 2022
Insert images missing from table and remove highlighting.	11 Mar 2022
	07 Nov 2021
Corrections to formatting and numbering.	27 Mar 2021
Correction to formatting and numbering of legislation extracts.	27 Mar 2021
Minor grammatical correction to recent amendment, and additional highlighting at 2.1.1(b).	05 Mar 2021
Content reviewed and updated - see page for details.	18 Feb 2021