Buchanan Turf Supplies Pty Limited
[2014] ATMO 26
•22 March 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1504875 (1, 4, 5, 7, 8, 25, 31, 37, 42, 44) - SIR WALTER- in the name of Buchanan Turf Supplies Pty Limited.
Delegate: | Robert Wilson |
Representation: | Applicant: David Kell of Counsel, instructed by Jim Griffiths of McDonald Johnson Lawyers |
Decision: | 2014 ATMO 26 Ex parte hearing: Section 41 – trade mark consists of description of a plant covered by PBR grant – not adapted to distinguish applicant’s goods – does not distinguish the Applicant’s goods in class 31 – application rejected unless class 31 deleted. |
Background
Buchanan Turf Supplies Pty Limited (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). Details of the application as at filing are as follows:
Application Number:
1504875
Filing Date:
26 July 2012
Trade Mark:
SIR WALTER (‘the Trade Mark’)
Goods and Services:
See Appendix
The application was examined as required by s 31 of the Act and the first official report (‘the first report’) raised grounds for rejecting the Trade Mark pursuant to ss 41, 43 and 44. The ground for rejection pursuant to s 41 was raised in respect of some only of the Applicant’s Goods and Services, being those goods and services in classes 1, 5, 31 and 44. The ground for rejection pursuant to s 43 was raised in respect only of the Applicant’s goods in class 31. The ground for rejection pursuant to s 44 was in respect of five earlier trade marks.
The examiner indicated in the first report that the ground for rejection in respect of the goods and services in classes 1, 5 and 44 might be overcome by the Applicant if it provided evidence of use pursuant to s 41(5) of the Act.[1] The Applicant provided submissions and evidence which satisfied the examiner that the Trade Mark does or will distinguish the Applicant’s good and services in those classes, thereby overcoming the s 41 ground for rejection in respect of classes 1, 5 and 44.
[1] Section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into effect on 15 April 2013. Since the filing date of the Trade Mark predates the amendment to s 41, it is the version of the section in place at the time of filing which applies to this matter. See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.
The examiner considered that the Trade Mark was not to any extent inherently adapted to distinguish the Applicant’s turf grass goods in class 31 from the goods or services of other persons and as such fell to be considered under s 41(6) of the Act. The reasons for raising the ground for rejection were explained in the report as follows:
Trade Marks which are likely to be needed by other traders
A trade mark is used to distinguish goods such as plants sold by one trader from those sold by other traders. It can be a letter or letters, a word, phrase, name, signature, number, design, shape, colour, sound, scent or symbol. It can also be any combination of these.
A trade mark will more easily meet the requirements of section 41, and will be easier to register, if it is something other traders do not commonly use in relation to plants, and are not likely to need to use.
A trade mark will be more difficult to register if it is something that other traders commonly use in relation to plants, or are likely to need to use.
This is because a trade mark should be able to be used on any number of different plants. However if a trade mark’s main feature is the name of a plant, other traders will need to use it to identify that plant. The trade mark will not be able to differentiate the plant sold by one trader from the same plant sold by other traders.
Your trade mark is SIR WALTER. This is the name of a particular plant of the genus Stenotaphrum. Other traders should be able to use this name to describe their similar goods.
Trade marks should only be used to indicate the trade source of goods, and should not be used as the names of particular plants. If a trade mark is used as a plant name it could become the accepted name for identifying the particular plant. If this happened, any trade mark registration might be open to challenge.
I have raised this problem under subsection 41(6) of the Trade Marks Act.
I note that the applicant has PBR rights in this variety.
You can overcome this problem by agreeing, in writing, to delete class 31 from your specification.
The Applicant did not request that class 31 be deleted from the Applicant’s Goods and Services, but instead sought to rely on the same evidence of use provided in respect of classes 1, 5 and 44. The examiner was not satisfied by the submissions and evidence of use provided by the Applicant that before the filing date the Trade Mark distinguished the Applicant’s goods in class 31 as being those of the Applicant. The examiner accordingly maintained the ground for rejection pursuant to s 41 in respect of class 31.
The ground for rejection raised in the first report pursuant to s 43 was explained by the examiner thus:
Trade marks which are likely to deceive or cause confusion
A trade mark is used to distinguish the goods or services sold by one trader from those sold by other traders.
A trade mark will be difficult to register if its use would be likely to be deceptive or cause confusion.
This would usually be because of some meaning or implication the trade mark has in relation to the plant or plant related material being claimed. For example, if the name of a plant is used on a different but similar variety of plant, this would be likely to cause confusion.
Your trade mark is SIR WALTER. This is the name of a particular plant of the genus Stenotaphrum. If this was used on plants or plant material of other members of this genus it would be misleading to buyers of your goods and would cause confusion in the marketplace.
You can overcome this problem by agreeing, in writing, to delete class 31 from your specification of goods.
In response the Applicant indicated that, to overcome the ground for rejection pursuant to s 43, it was prepared to amend its claim in class 31 to read:
Buffalo grass of the ‘Sir Walter’ variety (as lodged with the Registrar of Plant Breeder’s Rights (ref: certificate no. 1028), being part of the genus Stenotaphrum and a member of the species Secundatum.[2]
[2] I note that the requested amendment is missing a closing bracket and that this needs to be clarified when, and if, an amendment is made.
The examiner indicated in his second official report (‘the second report’) that the proposed amendment was sufficient to overcome the ground for rejection pursuant to s 43. The examiner also indicated that the amendment did not assist the Applicant in respect of the ground for rejection pursuant to s 41 and he had, therefore, not amended the claim in class 31.
The Applicant also responded to the first report with submissions regarding the ground for rejection raised pursuant to s 44. The examiner was persuaded by the submissions and withdrew the ground for rejection pursuant to s 44.
The Applicant requested to be heard on the grounds for rejection. I heard the matter in Canberra on 28 February 2013. Mr David Kell of counsel instructed by Mr Jim Griffiths of McDonald Johnson Lawyers represented the Applicant. Mr Kell’s submissions were confined to the ground for rejection pursuant to s 41 in respect of the Applicant’s goods in class 31. Where I refer to the Applicant’s claim in class 31, below, I am referring to the claim were it to be amended in the manner proposed by the Applicant as shown in para 6 above.
Evidence
I have before me the evidence provided to the examiner in response to the first report. The evidence consists of
Statutory Declaration dated 10 September 2013, by Brent William Redman, director of the Applicant, with Exhibits BR-1 to BR-7 (‘the Redman declaration’).
Exhibit BR-1 is a folder with twenty-eight tabs behind which appear a variety of documents. The pages within the folder are also, very usefully, numbered from 001 to 182. Exhibits BR-2 to BR-7 are a number of physical items such as a ‘fluorescent brimmed hat’ (BR-2), a ‘portable coffee thermos’ (BR-3) and a ‘stubbie holder with artificial grass effect’ (BR-5).
Discussion and reasons
According to the Redman declaration, the Applicant has carried on the business of growing and supplying turf for residential and commercial purposes on a wholesale and retail basis since 1978. The Applicant is also involved in developing new varieties of grass. In 1995 the Applicant developed a new variety of buffalo grass which it named ‘Sir Walter’. The Applicant applied to the Registrar of Plant Breeder’s Rights for protection for its new variety of grass under the Plant Breeder’s Rights Act 1994 (Cth) (‘the PBR Act’). Full rights were granted on 27 March 1998. A summary of the variety registration (‘the PBR registration’) is shown below:
| Buffalo Grass (Stenotaphrum secundatum) | |
| Variety: SIR WALTER | Synonym: N/A |
| Trade Reference: N/A | Application No: 1996/226 |
| Current Status: GRANTED | Certificate No.: 1028 |
| Received: 25 October 1996 | Accepted: 1 November 1996[3] |
| Granted: 27 March 1998 | |
[3] The term ‘accepted ‘under the PBR Act is defined in Section 30 as follows:
(1) The Secretary must, as soon as practicable after an application for PBR is lodged in a plant variety, decide whether to accept or reject the application.
(2) If the Secretary is satisfied that:
(a) no other application has, or, if the application were to meet the requirements of paragraphs (b) and
(c), would have, an earlier priority date in the variety; and
(b) the application complies with the requirements of section 26; and
(c) the application establishes a prima facie case for treating the plant variety as distinct from other varieties;
the Secretary must accept the application.
(3) If the Secretary is not satisfied of all of the matters referred to in subsection (2), the Secretary must reject the application.
Income received by the Applicant from the direct wholesale and retail sales of the ‘Sir Walter’ grass is significant, with figures in the many millions of dollars since developing the grass.
The PBR registration grants the Applicant the exclusive right to deal with Sir Walter in certain ways for a fixed period of time. Relevant sections of the PBA Act are given below:
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).
19 Reasonable public access to plant varieties covered by PBR
(1) Subject to subsection (11), the grantee of PBR in a plant variety must take all reasonable steps to ensure reasonable public access to that plant variety.
(2) Reasonable public access to a plant variety covered by PBR is taken to be satisfied if propagating material of reasonable quality is available to the public at reasonable prices, or as gifts to the public, in sufficient quantities to meet demand.
…
20 PBR is personal property
(1) PBR is personal property and, subject to any conditions imposed under section 49, is capable of assignment, or of transmission by will or by operation of law.
(2) An assignment of PBR (otherwise than because of the order of a court) does not have effect unless it is in writing signed by, or on behalf of, the assignor and assignee.
(3) If a grantee of PBR in a plant variety gives another person a licence in that right, the licence binds every successor in title to the interest of that grantee to the same extent as it was binding on that grantee of the PBR.
Note 1: The Personal Property Securities Act 2009 applies to PBR, and any licence in PBR, as intellectual property (see paragraph (d) of the definition of that phrase in section 10 of that Act). That Act deals with security interests in personal property, including intellectual property and intellectual property licences.
Note 2: Section 106 of the Personal Property Securities Act 2009 corresponds to subsection 20(3) of this section. Section 106 of that Act provides for security agreements in relation to intellectual property licences (or sub licences) to be binding on successors in title to the licences (or sub licences).
22 Duration of PBR
(1) Subject to subsections (4) and (5), PBR in a plant variety begins on the day that the grant of PBR in the variety is made.
(2) Subject to subsections (3), (4) and (5), PBR in a plant variety lasts for:
(a) in the case of trees and vines—25 years; and
(b) for any other variety—20 years.
(3) The regulations may provide that PBR in a plant variety included within a specified taxon lasts for a longer period than is specified in subsection (2).
…
27 Names of new plant varieties
(1) If PBR has not been granted in another contracting party in a plant variety before an application for that right in that variety is made in Australia, the name set out in the application must comply with subsections (4), (5), (6) and (7).
(2) If, before making an application in Australia for PBR in a plant variety, PBR has been granted in that variety in another contracting party:
(a) the name of the variety set out in the Australian application must be the name under which PBR was first granted in another contracting party; but
(b) there may, and, if the name referred to in paragraph (a) does not comply with subsections (4), (5), (6) and (7) there must, also be included in the application a synonym, additional to the name of the variety.
(3) The synonym must be a name determined in accordance with subsections (4), (5), (6) and (7) as if the variety had not been the subject of a grant of PBR in another contracting party.
(3A) If, before making an application in Australia for PBR in a plant variety, PBR has not been granted in that variety in another contracting party, a synonym may also be included in the application.
(4) A name (including a synonym), in respect of a plant variety, must be a word or words (whether invented or not) with or without the addition of either or both of the following:
(a) a letter or letters that do not constitute a word;
(b) a figure or figures.
(5) A name (including a synonym), in respect of a plant variety must not:
(a) be likely to deceive or cause confusion, including confusion with the name of another plant variety of the same plant class; or
(b) be contrary to law; or
(c) contain scandalous or offensive matter; or
(d) be prohibited by regulations in force at the time of the application; or
(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.
(6) A name (including a synonym), in respect of a plant variety must comply with the International Code of Botanical Nomenclature and subsidiary codes.
(7) A name (including a synonym), in respect of a plant variety must not consist of, or include:
(a) the name of a natural person living at the time of the application unless the person has given written consent to the name of the variety; or
(b) the name of a natural person who died within the period of 10 years before the application unless the legal personal representative of the person has given written consent to the name of the variety; or
(c) the name of a corporation or other organisation, unless the corporation or other organisation has given its written consent to the name of the variety.
As can be seen from s 22 of the PBA Act the rights granted to the Applicant in respect of Sir Walter are for a period of twenty years. This twenty year period expires on 27 March 2018. Once the protection period has expired Sir Walter will enter the public domain and be available for anyone to exploit commercially.
The section 41 ground for rejection
The examiner raised and maintained a ground for rejection pursuant to s 41 of the Act. The relevant version of s 41 provides:[4]
[4] See above n 1.
(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services - the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant-the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case-the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not to any extent inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The function of a trade mark is to act as an indication of trade source of the goods in relation to which the sign is to be used.[5] As stated by the Registrar’s delegate in SRF Holdings Inc, ‘[w]hether an applicant’s choice of sign for use as a trade mark is initially adapted to fulfill this function will depend on its successful negotiation of the labyrinth of section 41’.[6]
[5] See E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15, [41] – [43].
[6] [2013] ATMO 77, [19].
The operation of s 41 was discussed in Blount Inc v Registrar of Trade Marks where Branson J stated:
Subsections (3)-(6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the Registrar first to ‘take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons’. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.[7]
[7] (1998) 40 IPR 498, 504.
In assessing the inherent adaptation to distinguish of the Trade Mark it is important to note that adaptation to distinguish is not something that is acquired through use. Kitto J discussed this point in Michigan:
That ultimate question must not be misunderstood [that is, ‘whether the mark is registrable as being “adapted to distinguish” the applicant's goods’]. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v W. and G. Du Cros Ltd (1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not ‘adapted to distinguish’ the applicant's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said:
The applicant's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.
The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
The ground for rejection pursuant to s 41 relies on the view that ‘Sir Walter’ is the name of a particular variety of buffalo grass. The Applicant’s claim in Class 31 is for this particular type of buffalo grass. It is my view, therefore, that the trade mark entirely lacks inherent adaptation to distinguish, and falls under the provisions of s 41(6).
It is the case that at present other traders, unless licenced by the Applicant, are not able to trade in Sir Walter. The consequence of this is that at this time even should other traders ‘in the ordinary course of their business … desire to use [‘Sir Walter’] … upon or in connection with their own goods’ they are prevented from doing so by the PBR Act. However, once the rights granted under the PBR Act have expired other traders will be free to use the Trade Mark upon or in connection with their Sir Walter. That there is a delay before Sir Walter enters the public domain does not affect my assessment of the distinctiveness of the Trade Mark.
The Applicant has not explicitly conceded that the Trade Mark lacks inherent adaptation to distinguish, but has averred that even if it is the case that the Trade Mark lacks inherent adaptation to distinguish, the significant use of the Trade Mark by the Applicant means that, in fact, it does distinguish the Applicant’s class 31 goods from those of other persons: this being so whether or not the Trade Mark falls within s 41(5) or (6). Mr Kell has submitted:
The SIR WALTER trade mark is capable of distinguishing [the Applicant’s] goods and services of those of other traders.
The Redman declaration makes clear that, quite apart from any registration under the [PBR Act, the Applicant] has built up a significant reputation, over a number of years, in respect of the quality of turf propagated by it, and in respect of lawn-related products, each of which are supplied under and by reference to the SIR WALTER name. The exhibits to the Redman declaration evidence extensive use to date, by and on behalf of [the Applicant], of the SIR WALTER name in respect of such products. There can be no doubt that this is genuine trade mark use.
[The Applicant’s] business operations, conducted under and by reference to the SIR WALTER name, has been both extensive and long-standing. Thus, since 1996 [the Applicant] has received total gross income of more than $16 million in respect of sales of its premium buffalo grass (being the variety also subject to PBR rights) supplied, by or on behalf of [the Applicant], under and by reference to the SIR WALTER mark. [The Applicant] has not, in fact used the SIR WALTER name in respect of any other type of buffalo lawn or turf grass.
In addition, [the Applicant] has 68 growers and licensees who are authorised to supply its premium buffalo grass under and by reference to the SIR WALTER mark. Since 1999, [the Applicant] has received license fees exceeding $7 million relating to the SIR WALTER buffalo lawn.
These sales and licensing figures are, on any view, extraordinary.
The Applicant has also submitted that:
[A] trade mark that is without inherent adaptation to distinguish may nonetheless be registered under s 41(6).
Similarly, even if a mark has a descriptive function it may still function as a trade mark. The words (of the mark) may be used to describe the goods or services concerned, but still serve as a badge of origin.[8]
[8] Mr Kell referred me to: South Australian Brewing Co Pty Ltd v Carlton & United Breweries Ltd (2001) 185 ALR 719, [53]-[55]; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1990) 30 FCR 326, 343; and Coca Cola Company v All-Fect Distributors (1999) 96 FCR 7, [26] to support his statements.
The evidence provided supports the view that the Applicant is a successful developer and producer of a successful product: the product being Sir Walter grass. There are some 68 producers licenced by the Applicant to grow and sell Sir Walter in all mainland states and territories of Australia.[9]
[9] With the exception of the relatively insignificant Jervis Bay Territory.
The evidence also shows the Trade Mark in use in connection with the class 31 goods. However, the vast majority of the use of ‘Sir Walter’ as a trade mark is in connection with other material, most usually a mounted knight (‘the knight device’). A typical example is shown below:
Where the Trade Mark is not used in connection with the knight device, or other trade mark material, the use is most often, although by no means always, in a descriptive manner. Within the same document there is often a mix of the Trade Mark used in connection with the knight device, and use of the trade mark in a purely descriptive manner. For example, behind Tab 7 of BR-1 is what is declared to be, ‘copies of Yellow Pages entries and advertisements featuring the SIR WALTER name’. Page 052 shows a typical half page Yellow Pages advertisement which features the Trade Mark beneath the knight device at the top. The advertisement includes the words ‘Buy Quality Direct From Your Local Grower’ beneath which are a number of dot points as shown below:
· Sir Walter
· Inspection Welcome
· Soft Leaf Buffalo
· On Farm Pick Up
· CT-2 Couch
· Laying Service
· Kikuyu
· Delivery with Forklift
Use of ‘Sir Walter’ in this manner, alongside other varieties of grass is clearly descriptive use. Such use serves to emphasise the descriptive nature of the Trade Mark even where it is used alongside the knight device.
Tab 9 of BR-1 is declared to be ‘copies of promotional and marketing material relating to SIR WALTER buffalo lawn turf that have been displayed at retail sale outlets throughout Australia in the period from about 2003 to date’. Many of the pages behind this tab include the Trade Mark alongside the knight device but also on these pages are blocks of text which also show use of ‘Sir Walter’ in a descriptive manner. Some examples are:
Drought resistant, Sir Walter, requires minimal watering … : at p 064;
Without a doubt Sir Walter has proved to be the best performing lawn turf for our harsh Australian conditions … : at p 066;
The uniquely Australian made blade. That’s Sir Walter, created and developed right here to cope with our harsh Australian climates: at p 069;
Sir Walter features an unusually long growing season … : at p 069;
Developed right here in Australia to handle our unforgiving climate, Sir Walter is uniquely soft textured yet super strong: at p 072.
The Applicant has submitted that:
A word may also function as a trade mark, in the sense of being a badge of trade origin even though another mark or indication of origin is used in the same packaging or advertisement.
While I accept the validity of this statement I am not satisfied that ‘Sir Walter’ is capable of standing alone as a trade mark, rather it is, to paraphrase Jacob J, a kind of ‘limping mark’ used in connection with what is obviously a proper trade mark.[10]
[10] See Philips Electronics NV v Remington Consumer Products (1998) 40 IPR 279, 301.
The case of SRF Holdings Inc[11] concerned another name for grass which was a variety registered under the PBR Act. In considering similar issues to those being considered here the Registrar’s delegate stated the following:
[11] [2013] ATMO 77.
[29] [T]he registered name of the variety or the synonym by which it is to be known in the trade serve a single purpose and that is to describe the plant in respect of which the names are to be applied. They are effectively generic descriptions of the specific plant. It is well understood in trade marks law that the name of a product, and especially a new product, is not well adapted to distinguish the relevant goods of one producer from those of another. In Siegert v Findlater Fry J said:
The person who produces a new article and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own, because until somebody else produces the same article there is nothing to distinguish it from.
[30] And as stated in Shanahan, at [20.560]:
The question is one of fact, namely whether the name indicates the product in general or the product as emanating from one trade source. … A name may become generic if applied to a plant variety, and necessarily so when adopted as the name of a new plant variety registered under the Plant Breeder’s Rights Act 1994. However, a plant variety name in combination with other matter can be distinctive depending on the additional material in the mark.
[31] In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd and Another (‘Persian Fetta’) Middleton J said the following while discussing the application of section 41 to the trade mark under consideration: (emphasis added)
The categories of descriptive words on the one hand and those that are capable of distinguishing goods and services on the other are not mutually exclusive. As Lockhart J said in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 335–6 ; 101 ALR 700 at 711–12 ; 21 IPR 1 at 12–13 (Johnson & Johnson):
The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (Osowoolo) and trade marks (Orlwoola) (1909) 26 RPC 683 at 850 and 854 (the Orlwoola case) and Re Joseph Crosfield & Sons Ltd (Perfection) [1910] 1 Ch 118; (1909) 26 RPC 837 (the Perfection case).
If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.
A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Re Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark [1936] 2 All ER 975 at 987 ; (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 All ER 570 ; 1 WLR 554. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (above) (at 857–858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213 ; 1B IPR 401, per Lord Herschell.
Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the identity of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.
[32] The primary descriptive meaning of the Trade Mark is that of a particular kind of Paspalum grass. It has no secondary meaning, and is not capable of developing any secondary meaning. The whole purpose behind the genesis of the Trade Mark is to identify the grass which the applicant has developed and intends to market in Australia. 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.[12]
[12] Ibid, [29]-[32], citations omitted.
In respect of the use of names of products coined by manufacturers Jacob J stated in British Sugar PLC v James Robertson & Sons Limited:
There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a product and be able to show massive use by him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark.[13]
[13] [1967] RPC 281, 302.
In this matter the Applicant has coined the name ‘Sir Walter’ for its grass, and has shown significant use by it and its licensees. Nonetheless, ‘Sir Walter’ is apt to be the name of the grass, not a trade mark. Further, I am not satisfied by the submissions and evidence provided by the Applicant that the Trade Mark, when used in connection with Sir Walter grass enables it to distinguish the Applicant’s goods in class 31 as being those of the applicant.
Conclusion
The Applicant has failed to establish that, because of the extent to which the Applicant used the Trade Mark before the filing date it does distinguish the Applicant’s goods in class 31 as being those of the Applicant. Accordingly, it is my intention, in accordance with s 33(3) of the Act, to reject the application.
However, if within fourteen (14) days from the date of this decision the Applicant requests in writing to amend the Application by deleting class 31 the Application may proceed to acceptance one month from the date of this decision.
As this decision may be appealed, the amendment, if requested, will not be carried out until the period allowed for filing an appeal at the relevant court and notifying the Registrar of such, has expired. If there is an appeal, and it is not discontinued, I direct that the disposition of the application be in accordance with the court’s order or direction.
Robert Wilson
Hearing Officer
Trade Marks Hearings
21 March 2014
APPENDIX
Class: 1 Chemicals used in agriculture
Class: 4 Wetting and binding compositions
Class: 5 Herbicides
Class: 7 Agricultural implements other than hand operated
Class: 8 Hand tools and implements used in agriculture
Class: 25 Clothing
Class: 31 Turf grass
Class: 37 Installation services
Class: 42 Design and development of computer hardware and software
Class: 44 Agricultural services
(‘the Applicant’s Goods and Services’)
0
7
0