Part 32A.4 Information relevant to s 42(b) considerations in relation to application plant or plant materials

This subpart should be read in conjunction with Part 30 Signs that are Scandalous and Use Contrary to Law, to assess whether a ground for rejection must be raised under s 42(b) of the Trade Marks Act 1995 (Cth) for an application that relates to plants or plant materials. The information below provides information to help determine whether use of a trade mark in relation to plants and plant related materials would be contrary to law.

32A.4.1 The Plant Breeder’s Rights Act

The Plant Breeder’s Rights Act 1994 (Cth) grants commercial ownership rights to breeders of new plant varieties. The PBR Act includes the following section relevant to the consideration of s 42(b) of the Trade Marks Act 1995:

Section 53: Infringement of PBR

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

 (a)  a person doing, without, or otherwise than in accordance with, authorisation from the grantee of the right, an act referred to in a paragraph of section 11 in respect of the variety or of a dependent variety; or

 (b)  a person claiming, without, or otherwise than in accordance with, authorisation from the grantee of that right, the right to do an act referred to in a paragraph of section 11 in respect of that variety or of a dependent variety; or

 (c)  a person using a name of the variety that is entered in the Register in relation to:

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

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

It should be noted that both accepted and granted PBR’s can trigger the provisions of s 53.

Section 11: General nature of PBR

Subject to sections 16, 17, 18, 19 and 23, PBR in a plant variety is the exclusive right, subject to this Act, to do, or to license another person to do, the following acts in relation to propagating material of the variety:

 (a)  produce or reproduce the material;

 (b)  condition the material for the purpose of propagation;

 (c)  offer the material for sale;

 (d)  sell the material;

 (e)  import the material;

 (f)  export the material;

 (g)  stock the material for the purposes described in paragraph   (a), (b), (c), (d), (e) or (f).

Note:  In certain circumstances, the right conferred by this section extends to essentially derived varieties (see section 12), certain dependent plant varieties (see section 13), harvested material (see section 14) and products obtained from harvested material (see section 15).

32A.4.2 Circumstances where s 53 of the PBR Act triggers a ground for rejection under s 42(b) of the Trade Marks Act:

32A.4.2.1 Subsection 53(1)(b)

A PBR in a plant variety is infringed by a person ‘claiming’ that they have the right to do an act referred to in s 11 of the PBR Act when they are not the grantee of the PBR or authorised by the grantee do to that act. Use of a trade mark which contains a variety name or synonym of an accepted or granted PBR is likely to be seen as making a claim to the exclusive rights in the plant variety referred to in s 11 of the PBR Act (for example, the exclusive right to sell the propagating material). Therefore, a ground for rejection must be raised under s 42(b) of the Trade Marks Act if a person is not entitled to make a ‘claim’ to do an act referred to in s 11 .

If the answer to the following three questions is yes, a ground for rejection should be raised under s 42(b) of the Trade Marks Act:

(1) Is the variety name or synonym of an accepted or granted PBR present in the trade mark in such a way that it retains its meaning as a variety? 

AND

(2) do the claimed goods notionally include the variety or a dependant variety for which the PBR is listed?

AND

(3) is the owner of the trade mark application a different entity to the title holder of the PBR?

Note: If the applicant can demonstrate they are the PBR title holder or an authorised licensee, the ground for rejection can be withdrawn.

32A.4.2.2 Subsection 53(1)(c)

A PBR is infringed where a person uses a variety name or synonym of a plant variety entered in the Register of Plant Varieties in respect of any other plant variety of the same plant class or a plant of any other variety of the same plant class.

If the answer to the following two questions is yes, a ground for rejection should be raised under s 42(b) of the Trade Marks Act:

(1) Is the variety name or synonym of an accepted or granted PBR present in the trade mark in such a way that it retains its meaning as a variety? 

AND

(2) do the claimed goods notionally include any other plant variety of the same plant class or a plant of any other variety of the same plant class for which the PBR is listed?

Note: If the applicant is the owner of both the mark and the holder of the PBR, a s 42(b) ground for rejection must still be raised where the goods specified in the application would encompass ‘any other plant variety of the same plant class or a plant of any other variety of the same plant class for which the PBR is listed. In these cases, the owner may address the ground for rejection by limiting the scope of the goods to conform to the PBR (e.g. Class 31: plants of the variety named [VARIETY NAME] registered in the Register of Plant Varieties’ or an appropriate equivalent such as identifying the plant variety by its scientific name) or by amending as per 34A.4.5.1 Amending the goods.

32A.4.3 Use of a PBR variety/synonym

The following are examples of where the inclusion of PBR varieties/synonyms are/are not likely to retain their meaning as a variety for s 42(b) considerations:

Trade mark under examination	Existing PBR variety name/synonym	Retains the meaning as a variety name/synonym
DRA-MA	DRAMA	Yes – although the trade mark has a slight difference it still presents as the word DRAMA and therefore retains its meaning.
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/synonym.
DRAMA QUEEN	DRAMA	No – 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 variety name/synonym.
PYNQ DRA	PINK DRAMA	No – the adaptation in the trade mark is sufficient to remove its meaning as the variety name/synonym.
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 name/synonym.
	DRA	Yes – the word DRA appears as a separate word element in the trade mark and retains its meaning as the variety name/synonym.
	DRA BLACK ROCK	No – the whole variety name/synonym is not present in the trade mark, so DRA does not retain its meaning as a variety name/synonym.
	DRA	Yes – the word DRA appears as a separate word element in the trade mark and retains its meaning as the variety name/synonym.
	DRA	Yes – the word DRA appears as a separate word element in the trade mark and retains its meaning as the variety name/synonym.

32A.4.4 Trade References

A s 42(b) 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 ss 41 and/or 43 of the TM Act if research shows market place use of the relevant trade reference indicates that it could be viewed as an alternate name for the plant material rather than an identifier of trade source. (For more information, see part 22.3.1(c) of this chapter)