22.27. Trade marks that include plant varietal name

Trade marks that include the name of a particular plant may not be inherently capable of distinguishing goods certain goods, including those classified outside class 31.  

This most commonly (but not exclusively) applies to goods classified in classes 5, 29, 30, 32 and 33 that can be made from plant material.  If a trade mark includes the name of a plant in a manner that simply describes what the good(s) are made from, other traders also have a legitimate need to use that reference, on the same or similar goods.

As with non-plant considerations, the examiner’s decision should take into account ordinary significance (where a plant name has other meaning in the common domain) in connection with the nature of the claimed goods.

See below examples:

• The word KIPFLER, applied to potato chips classified in class 30.  Kipfler is a common and well known variety of potato. The ordinary signification would be that the potato chips are made from Kipfler potatoes.  Other traders should also be able to indicate that their potato chips are made from Kipfler potatoes.
• The same approach can be applied to the wording GRANNY SMITH, applied to apple pies in class 30 and apple juice in class 32.  This varietal is very well known and understood, and the ordinary signification of this reference would be that the goods are made from Granny Smith apples.
• The word ROMA, applied to processed tomatoes in class 29.  In addition to it being a variety of tomato, it is also a well-known and understood geographical location (both a township in Queensland and a reference to Rome, the capital city of Italy).  Applied to the goods in question however, the varietal understanding and signification is so strong that a section 41 ground for rejection would be warranted.