Part 32A.3 Information relevant to s 41 considerations in relation to applications for plants/plants materials

This subpart should be read in conjunction with Part 22 Section 41 – Capable of Distinguishing to assess whether a trade mark is capable of distinguishing plants/plant material related claims. The information below is intended to assist in determining whether a trade mark has an ordinary meaning in relation to plants and plant related claims, and whether it is likely other traders would have an honest desire to use the trade mark for that meaning (or one very nearly resembling it) in connection with the designated goods and services.

32A.3.1 Considerations for Distinctiveness of Plant Variety Names under s 41 of the Trade Marks Act

A sign consisting solely of plant related nomenclature (plant names, genus, species, variety, trade names etc) is unlikely to have any inherent adaptation to distinguish plants, plant material, or goods that could include or be made from the relevant plants/plant material. This is because other traders would have an honest desire to use these signs for their ordinary meaning in connection with similar goods. Even the name of an expired PBR will still result in a ground for rejection, if the expired PBR still conveys the ordinary meaning that traders would desire to use it for.

Plant material includes all parts of the plant, whether propagating or harvested material, such as fruit, flowers, seeds, vegetative cuttings, and live plant tissues. Specifications such as animal food, litter, and mulch may also include plants or plant material, and variety names or other plant names may be relevant to these claims.

Note: If a trade mark applicant is the originator of a new plant variety, this does not mean the variety name will have inherent adaptation to distinguish the plant or plant materials claimed. This will be determined by whether other traders are likely to desire to use the name for its ordinary signification in connection with similar goods. This point was discussed by Yates J in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 when considering the inherent adaptation of SIR WALTER in relation to a buffalo grass at [55]

Here, the appellant developed a new thing—a new variety of buffalo grass having particular characteristics—which it called Sir Walter.  Sir Walter is the given and proper name for the new variety.  It has no other name.  In this way, the name Sir Walter must be taken to be part of the common stock of language that denotes this particular variety of grass.  In a way, the present case provides an example of the developing use and adaptation of language to describe new things:  see Apple at [16]. When used in connection with the relevant goods, the name Sir Walter is no less the descriptor of the new variety because it might be possible to describe Sir Walter grass using other words. I am satisfied that, in the normal course of events, other traders would wish to use the name Sir Walter for the grass, for no reason other than the obvious one: Sir Walter is the grass’ given name and accepted official designation.

32A.3.2 The Name of a Plant

In the plant breeding industry, plant names are used to identify particular plants and differentiate them from other plants. Plant names are subject to scientific and plant breeding naming conventions and fall into a number of different categories:

• scientific nomenclature, which is the hierarchical system for naming living things. The naming of plants is governed by the International Code of Nomenclature for algae, fungi, and plants (ICNafp). This code includes:

  • genus and species, which identifies every plant by a unique binomial  

  • secondary taxa below that of species, being “variety” and “form”.

  • provision for the special category of organisms which are cultivated in agriculture, forestry and horticulture. These are governed by the International Code of Nomenclature for Cultivated Plants (ICNCP) which defines the “cultivar” (cultivated variety) as its basic category.  

    • These varieties or cultivars may be protected under the PBR Act, under which IP Australia administers the PBR register. This protection is based upon the framework outlined under the UPOV convention, of which Australia is a member.  Variety names can also be used in the marketplace without being registered.

    • The PBR register allows for nomination of a second alternative variety name, called a synonym

• common names, which often appear in dictionaries, may reflect a characteristic of the plant, and may apply to plants in a number of different genera e.g. bluebell is the common name applied to plants having blue bell-shaped flowers, such as those in the genera Wahlenbergia, Campanula, and Hyacinthoides. See also WATTLE examples below.

Examples of the different naming convention applied to plants: 

The naming conventions are:

• Genus and species: Latin, italics, first letter of genus is in upper case, species are all lower case.

• Variety/cultivar/synonym: usually presented in single inverted commas, often presented after the genus and species. 

32A.3.2(a) Variety names

Although cultivated plant variety names are invented or coined, they are nevertheless part of the scientific nomenclature.

The name given to a plant variety is one of the apt ways to refer to that particular plant.

In Mastronardi Produce Ltd v Registrar of Trade Marks [2014] FCA 1021 (“ZIMA”), Gordon J 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 treated as synonymous and used interchangeably in plant industry literature:

• variety

• plant variety/varietal name

• variety denomination

• denomination

• name of a plant variety

• cultivar

• cultivated variety

• strain

• hybrid

32A.3.2(b) Synonyms

In the context of the PBR Act, synonym has a specific 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.

Regardless of whether a trade mark solely comprises of a synonym, or in combination with the name of a plant variety, a ground for rejection will still exist.

Hypothetical Example: An application is received for DREAM ROSA on roses. Research of the Register of Plant Varieties indicates that DREAM is a noted synonym for a particular variety of roses, for which the right has expired. If research supports that the term DREAM is still being used to refer to a specific variety of roses, the trade mark will still have an ordinary signification and will therefore not be capable of distinguishing the goods.

32A.3.2(c) Trade names and alternate names

The following terms are synonymous and can be used interchangeably in plant industry literature:

• trade name

• trade designation

• trade reference

Names used in the context of these terms may have no inherent adaptation to distinguish the relevant plant material if they are signs that other traders would have an honest desire to use for their ordinary signification in relation to the goods in question. In SFR Holdings Inc [2013] ATMO 77 the delegate considered the trade mark ‘SEADWARF Paspalum SDX-1’ to not be to any extent inherently adapted to distinguish the relevant goods, on the basis that ‘Seadwarf’ is the trade reference for variety ‘SDX-1’ of the ‘Paspalum’ genus of grass at [32]:

…Given that the Trade Mark is clearly composed of a registered variety name, the trade name for the same plant (recorded on the PBR register) and the name of the genus of grass in respect of which the two previously mentioned names are to be applied, the combination of words serves a single purpose and that is to define exactly which grass the name refers to. It can have no other purpose. As such, it is a mere description of the relevant goods, it has no inherent adaptation to distinguish those goods and thus the provisions of section [41(6)]) apply.

While a trade name, reference, or designation may have descriptive significance which justifies raising a ground for rejection under s 41, caution must be exercised to ensure that names which have only ever been used as a brand are not subject to inappropriate grounds for rejection. Each case will be assessed on its facts, as in the Seadwarf case discussed above.

32A.3.2(d) Combinations of Plant Names, Variety Names, Trade Names & Alternate Names

Combining elements together such as plant names, variety names, trade names or alternate names, regardless of the order or industry, may not affect the inherent adaptation of the mark.

This is because any combination of these terms may still create an ordinary signification that describes characteristics of the plant material, such as the genus or trade reference, which is not changed by the order of the words.

32A.3.2(e) Descriptive words that are common to the trade

The following is a list of descriptive terms that are common to trade marks containing plant materials that generally do not add any capacity to distinguish. Please note that this list is not prescriptive and examiners should be cautious to identify other terms that only serve a descriptive purpose.

• colours (red, green, magenta, tangerine, etc)

• seasons (Spring, Summer, Autumn, Winter)

• sizes (mini, dwarf, giant, etc)

• bloom type (double, single)

   

  Trade Mark	GFR
  Example: An application is received for PINK FEVER DREAM EUCALYPTUS claiming Eucalyptus plants. Research shows that “Pink Dream” is a recognised variety of Eucalyptus. FEVER DREAM is a known term to refer to a bizarre or surreal experience. As a whole, FEVER DREAM has another meaning which is likely to be taken as the ordinary signification from the trade mark, and one that other traders would not legitimately desire to use.	No GFR
  An application is received for MINI PINK BLOOMING EUCALYPTUS, claiming Eucalyptus plants. While research does not indicate the terms MINI, PINK or BLOOMING are references to a variety or genus, research does indicate various types of Eucalyptus plants produce pink coloured flowers and that Eucalyptus plants typically bloom in the summertime. The trade mark as a whole has no capacity to distinguish as it only contains references to descriptive material of a Eucalyptus plant; that is, it is smaller in size (MINI), is the colour PINK (colour of the flowers produced) and bloom (BLOOMING).	Yes - 41(3)
  An application is received for DOUBLE BARREL, claiming lilacs. Research indicates that lilacs are flowers that typically produce double flowers or double blooms. While double may be a reference to the number of flowers produced, the addition of the word BARREL changes the meaning as a whole to the common term relating to the barrels in a gun. As a whole DOUBLE BARREL does not contain an ordinary signification that other traders would have a legitimate desire to use.	No GFR

32A.3.3 Realistic images and common depictions of plants or plant related materials

Realistic images and common depictions of plants or plant materials will generally not be inherently adapted to distinguish the relevant goods for the purposes of s 41 because they perform the same function as descriptive words: they describe or depict the goods themselves.

In the context of applications claiming plants or plant materials, the ordinary signification of a realistic or commonly used image of a plant is that it represents the plant, plant material, or a characteristic of the goods. As such, these depictions fall within the common stock of signs that other traders would legitimately wish to use in the ordinary course of trade to describe or illustrate their own goods. This mirrors the treatment of plant names, variety names, and other plant-related nomenclature discussed elsewhere in this chapter.

Trade Mark	GFR
Class 31: Roses	Yes 41(3) - The trade mark as a whole is a realistic and commonly available representation of the goods.
Class 31: Roses	Yes 41(4) – The trade mark contains some stylisation and embellishments, which provide some adaptation. However, the rose overall still so nearly resembles rose depictions other traders would have an honest desire to use for their meaning.
Class 31: Roses	Yes 41(4) – The trade mark contains some stylisation and embellishments, being the silhouette outline and the drips on the leaves. In combination these elements provide some adaptation to distinguish. However, it is common for traders to use silhouettes of goods, and as such the trade mark still closely resembles a typical depiction of a rose silhouette that other traders would have an honest desire to use.
Class 31: Roses	No - The trade mark includes a sizeable graphic element that is not realistic or commonly available representations of the goods.

32A.3.4 Examining applications containing claims for animal food, litter or mulch 

Broad specifications, such as animal foodstuffs, litter, and mulch, notionally cover plant material, including both propagating and harvested material. 

“Animal food” or “pet food” notionally covers all kinds of food for many different types of animals, including plant material such as hay and grains for livestock or horses (pets) and seed for birds, etc., for which plant names would be descriptive.

For example, the common name linseed (flax plant) is descriptive in relation to “birdseed”, which is notionally covered by a broad claim for “animal food.” Similarly, if a variety name were found in research in relation to the linseed genus (Linum) it would be descriptive if applied to a bag of linseed. Plant names will not be a consideration for claims which are more specific and do not primarily consist of plant material, such as “canned dog food” or “dry cat food.” 

“Litter” and “mulch” can be goods in the form of plant material which is laid down as ground cover. Variety names are not likely to be relevant for these types of products, as they are not usually sold by reference to variety, but common plant names such as cypress or pine would be relevant to products such as bark or woodchip mulch. Variety or other plant names are not relevant to goods such as “cat litter.” 

The assessment of s41 in relation to variety and other plant names and whether they apply to broad claims will be informed and determined by research into the relevant genus/genera and into the nature of goods covered by the claim. That is, the examiner should be satisfied that if a term is identified as a genus/genera of plant material, that this term is likely to be desired for use to refer to a good encompassed by the claim within the application.

32A.3.4.1 Potential amendments and limitations to address distinctiveness objections 

In some instances, an amendment or limitation may be sufficient to overcome a ground for rejection raised under s 41, if the amendment results in a specification to which the ground for rejection would no longer apply. However, any such amendment or limitation to exclude goods must not then subsequently render the trade mark misdescriptive.