SFR Holdings Inc
[2013] ATMO 77
•23 September 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1469889(31) - SEADWARF PASPALUM SDX-1- in the name of SFR Holdings Inc.
| Delegate: | Alison Windsor |
| Representation: | Applicant: John Hawker of Marks & Clerk Australia, Patent and Trade Mark Attorneys |
| Decision: | 2013 ATMO 77 Ex parte hearing: Section 41 – trade mark consists of description of a plant covered by PBR grant – not adapted to distinguish applicant’s goods – not capable of distinguishing in the future – application rejected. |
Background
SFR Holdings Inc, a company based in Colorado, USA (‘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 shown here:
Number: 1469889
Date filed: 17 January 2012
Trade Mark: SEADWARF Paspalum SDX-1 (‘the Trade Mark’)
Goods and class: Class 31: Natural turf, reinforced turf, turf grasses, turf seedlings, grass seeds
The application was examined as required by section 31 of the Act and the first official report raised grounds for rejecting the Trade Mark under both of sections 41 and 43. The reasons for raising grounds 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 SEADWARF PASPALUM SDX-1.
This is the name of a particular plant of the genus Paspalum.
SDX-1 is the name of a variety of Paspalum, namely Paspalum vaginatum Swartz. As such it has been granted PBR rights. You are the owner of those rights and they were granted in December 2008. The term SEADWARF is the commonly used name for this variety of paspalum. In other words SEADWARF is, at least, a synonym for the variety in question.
Your mark, thus, combines the commonly used varietal indictor with the “formal” variety name. It is, of course, common practice to show, say on a plant label, such information.
Other traders should be able to use this information to describe their similar goods.
I have raised this problem under subsection 41(5) of the Trade Marks Act.
You might be able to overcome this problem if you supply evidence of use under subsection 41(5) of the Trade Marks Act 1995.
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 SEADWARF PASPALUM SDX-1.
SDX-1 is the name of a particular variety of Paspalum. If this mark was used on plants or plant material not being of the variety of Paspalum called SDX-1 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 amend your specification of goods to:
Natural turf, reinforced turf, turf grasses, turf seedlings, grass seeds; all being plants or plant material of the variety SDX-1 of the genus Paspalum.
The applicant responded to the report and requested that its goods specification be amended to the wording suggested by the examiner. The goods specification was amended, and the current wording of the goods on the official record of the application is that which is shown in the paragraph immediately above.
In the second official report, the examiner noted the amendment to the specification and advised that because of it the ground for rejection under section 43 had been overcome. However, he pointed out that the section 41 ground for rejection had not been dealt with and would be maintained.
The applicant then requested a hearing which was set down for Melbourne on 19 July 2013. As a delegate of the Registrar of Trade Marks I heard the matter on the appointed day. The applicant was represented by Mr John Hawker of Marks & Clerk Australia, Patent and Trade Mark Attorneys, who gave oral submissions on the applicant’s behalf.
Following the hearing I allowed the applicant additional time in which to provide me with information about any use of the Trade Mark. I have now received that information and thus I am now in a position to consider the ground for rejection raised under the provisions of section 41 of the Act.
Discussion and reasons
Grounds for rejecting the application under section 41 were raised in part because the applicant has registered a plant variety under the provisions of the Plant Breeder’s Rights Act 1994 (‘the PBR Act’). A summary of the variety registration is shown below:
Seashore Paspalum (Paspalum vaginatum Swartz)
Variety: SDX-1
Synonym: N/A
Trade Reference: SeaDwarf ™
Application No: 2006/160
Current Status: GRANTED
Certificate No.: 3660
Received: 20 June 2006
Accepted: 11 March 2008[1]
Granted: 16 December 2008
[1] The term ‘accepted ‘under the PBR Act is defined in Section 30 as follows:
The applicant had previously been granted registration in the USA of the variety SDX-1 as a plant patent for the same Paspalum grass with a grant/registration date of 3 December 2002. The number of the patent is US PP13294 P3.
The applicant also has registered a trade mark for the word SEADWARF in the principal register of the USPTO for ‘non-artificial turf grasses’. The trade mark application has a priority date of 22 December 2000 and is numbered 2698727.
I note that the applicant had previously applied in Australia to register the word SEADWARF as a trade mark for ‘natural turf, reinforced turf, turf grasses, turf seedlings, grass seeds’ in class 31 (trade mark number 1346521). Three examination reports issued on this application raising and maintaining grounds for rejecting the application under sections 41 and 43 of the Act. Following the receipt of the third report the applicant allowed the application to lapse.
At the hearing, Mr Hawker for the applicant submitted that the section 41 ground for rejection was untenable because of the comment ‘other traders should be able to use this information to describe their similar goods’. Mr Hawker submitted that the applicant, as owner of the PBR right, was the only person with the right, by virtue of the PBR Act, to use the trade mark in order to sell, or licence the sale of, the relevant goods.
Subsequent to the hearing the applicant filed the declaration by Mr John Hawker, made on 15 August 2013 and with Exhibit JH-1 providing information which Mr Hawker had earlier referred to in written submissions.
The declaration directed me to the website at < for information about use of the claimed trade mark SEADWARF in relation to the relevant grass to which the name is applied. The website owner is a licensee and a related corporation to the applicant. As far as I could see there was no mention of the plant patent or the PBR variety SDX-1 on the website – all mention was of the name SEADWARF accompanied by the ® symbol denoting its registered status. The website notes that the grass itself is commonly known as a ‘Seashore Paspalum’ and that the SEADWARF variety is largely used for producing high quality turf for playing surfaces such as golf fairways and greens as well as for sports fields. The website states that SEADWARF is the only existing dwarf cultivar of Seashore Paspalum, and that it is extremely salt tolerant, able to be watered with varying water qualities including effluent and reclaimed or brackish water.
Mr Hawker declares that most use to date has been in the USA, with use projected to extend to Australia at some time in the near future. Exhibit JH-1 to the Hawker declaration provides a list of around 60 golf courses in the USA and Mexico where the grass has been used as well as naming six baseball and football fields where it has also been used. I note that two of these ballfields are to be found in Caracas, Venezuela. The list also provides the names of golf course architects who have used the SEADWARF grass in their constructions – readily recognisable names within the list are those of Greg Norman, Jack Nicklaus and Ernie Els.
The declaration also specified that the target market for the product is not the domestic consumer but is to specialists in the use of turf, such as golf course designers, architects and professional groundsmen. The grass is not sold as seed but is produced by specialist turf growers and is likely to be grown to order. Marketing is largely by word of mouth which the Mr Hawker says has been very effective. He also noted that ‘the nature of the target market in Australia is such that the buyers and users of the product are most likely to be able to differentiate the trade mark element of the Mark Seadwarf from the varietal and generic elements of the Mark’.
Section 41 – trade mark not distinguishing applicant’s goods or services
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 section 41, it is the version of the section in place at the time of filing which applies to this matter.[2]
[2] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50
Section 41 in its un-amended form provides:
(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).
Fundamental to the whole question under consideration is the definition of what a trade mark is. Section 17 of the Act defines the term as follows:
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: for sign see section 6
Australian courts hold that the essential or primary function of a trade mark is to act as an indication of the trade source of the goods in relation to which the sign is to be used.[3] Whether 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.
[3] See E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 241 CLR 144; 84 ALJR 352; [2010] HCA 15 at [41] – [43] (HCA).
The nature and operation of section 41 were discussed by Branson J in the Oregon decision, Blount Inc v Registrar of Trade Marks [1998] 40 IPR 498 where she said (in part):
Subsections (3) to (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.
The first consideration must be to what extent the Trade Mark is inherently adapted to distinguish the applicant’s goods from the similar goods of other persons (absent consideration, at this stage, of the effects of the PBR registration which I will revert to later in the discussion).
Inherent adaptation to distinguish refers to the quality of a trade mark itself and is something which cannot be acquired through use. In the Michigan decision,[4] Kitto J said the following about inherent adaptation to distinguish:
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.
[4] Clark Equipment Co V Registrar of Trade Marks (1964) 111 CLR 511
The goods the applicant has claimed are ‘natural turf, reinforced turf, turf grasses, turf seedlings, grass seeds; all being plants or plant material of the variety SDX-1 of the genus Paspalum’. The word SEADWARF is recorded on the Australian PBR record as an official ‘trade reference’ in respect of the variety SDX-1 and thus the Trade Mark as a whole can only be seen as a description of a particular grass, namely the variety of Paspalum grass nominated in the goods specification. Technically, the Trade Mark is severely lacking in, if not completely devoid of, inherent adaptation to distinguish.
After examining the application the examiner informed the applicant that the provisions of subsection 41(5) applied to the Trade Mark: that is, that the Trade Mark is to some extent inherently adapted to distinguish. I do not agree with the examiner’s decision in this regard, as I am of the opinion that the Trade Mark is a simple description of the designated goods and is to no extent inherently adapted to distinguish. If that is so, then the provisions of subsection 4196) are applicable. However, the applicant has been quite open in stating that the Trade Mark is as yet unused in Australia. It is thus not able to overcome objections relating to either subsection via the provision of evidence of use, and as a result which subsection applies is undoubtedly moot.
The applicant, however, has raised an interesting point. The ground for rejection raised against the trade mark was phrased (in part) as follows:
Your trade mark is SEADWARF PASPALUM SDX-1.
This is the name of a particular plant of the genus Paspalum.
…
Other traders should be able to use this information to describe their similar goods.
The applicant submitted that because it is the owner of the PBR registration summarised at paragraph 7 of this decision, it is the only person who has the legal right to use the plant name in Australia and therefore the ground for rejection was not valid. I think it is appropriate here to consider the sections of the PBR Act that are most relevant in this context, and I have set them out 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.
Article 20 of the UPOV[5] Convention is another piece of background material which is relevant to the question of PBR and plant names. I have reproduced Article 20 in full below:
Article 20
[5] UPOV is the acronym for the International Union for the Protection of New Varieties of Plants, an intergovernmental organisation with its headquarters in Geneva. UPOV was established by the International Convention for the Protection of New Varieties of Plants which was adopted in Paris in 1961 and was revised in 1972, 1978 and 1991. Its mission is to provide and promote an effective system of plant variety protection, with the aim of encouraging the development of new varieties of plants, for the benefit of society. Both Australia and the USA are members of UPOV (the 1991 convention) and are thus bound by that Convention. Information about UPOV and the Convention can be found on its website at align="center">Variety Denomination
(1) [Designation of varieties by denominations; use of the denomination]
(a) The variety shall be designated by a denomination which will be its generic designation.
(b) Each Contracting Party shall ensure that, subject to paragraph (4), no rights in the designation registered as the denomination of the variety shall hamper the free use of the denomination in connection with the variety, even after the expiration of the breeder's right.
(2)[Characteristics of the denomination] The denomination must enable the variety to be identified. It may not consist solely of figures except where this is an established practice for designating varieties. It must not be liable to mislead or to cause confusion concerning the characteristics, value or identity of the variety or the identity of the breeder. In particular, it must be different from every denomination which designates, in the territory of any Contracting Party, an existing variety of the same plant species or of a closely related species.
(3)[Registration of the denomination] The denomination of the variety shall be submitted by the breeder to the authority. If it is found that the denomination does not satisfy the requirements of paragraph (2), the authority shall refuse to register it and shall require the breeder to propose another denomination within a prescribed period. The denomination shall be registered by the authority at the same time as the breeder's right is granted.
(4)[Prior rights of third persons] Prior rights of third persons shall not be affected. If, by reason of a prior right, the use of the denomination of a variety is forbidden to a person who, in accordance with the provisions of paragraph (7), is obliged to use it, the authority shall require the breeder to submit another denomination for the variety.
(5)[Same denomination in all Contracting Parties] A variety must be submitted to all Contracting Parties under the same denomination. The authority of each Contracting Party shall register the denomination so submitted, unless it considers the denomination unsuitable within its territory. In the latter case, it shall require the breeder to submit another denomination.
(6)[Information among the authorities of Contracting Parties] The authority of a Contracting Party shall ensure that the authorities of all the other Contracting Parties are informed of matters concerning variety denominations, in particular the submission, registration and cancellation of denominations. Any authority may address its observations, if any, on the registration of a denomination to the authority which communicated that denomination.
(7)[Obligation to use the denomination] Any person who, within the territory of one of the Contracting Parties, offers for sale or markets propagating material of a variety protected within the said territory shall be obliged to use the denomination of that variety, even after the expiration of the breeder's right in that variety, except where, in accordance with the provisions of paragraph (4), prior rights prevent such use.
(8)[Indications used in association with denominations] When a variety is offered for sale or marketed, it shall be permitted to associate a trademark, trade name or other similar indication with a registered variety denomination. If such an indication is so associated, the denomination must nevertheless be easily recognizable.
There is obviously a certain tension between the Act and the PBR Act as the latter does give exclusive rights to the applicant in doing certain things in respect of the plant variety during the life time of the PBR grant (see section 11 of the PBR Act reproduced at paragraph 26 of this decision). This could be seen, and often appears to be seen, as a de facto right to claim the name of the variety and/or its synonym as a trade mark.
However, the 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 [6] 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.
[6] [
And as stated in Shanahan,[7] 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.
[7] Shanahan’s Australian law of Trade Marks and Passing Off, on-line commentary at legalonline.thompson.com.au accessed 16 September 2013.
In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd and Another[8] (‘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.
[8] (2010) 90 IPR 117 at 125
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.
Relationship between PBR Act and Trade Marks Act
I mentioned earlier that there is a tension between the two Acts because of the rights given to the variety owner by the PBR grant. In this respect, paragraph [29,170] of Lahore’s Patents, Trade Marks and Related Rights[9] provides another interesting and relevant comment. In referring to section 27 of the PBR Act it states: (Emphasis added)
Article 20 UPOV states, in para (1)(a), that the "variety shall be designated by a denomination destined to be its generic designation",[10] or product name, and para 1(b) makes it mandatory for a contracting party to ensure that no rights in the designation registered for a variety hampers the free use of that name, even after expiry of the breeder's right. The holder of a breeder's right is not the proprietor of the denomination registered for the variety, but at most its guardian for the period of the breeder's right. Paragraph 1(b) of Art 20 is directed at the possibility of trade mark rights being asserted to hamper the use of a variety's name. This name, being the generic designation of the variety, is not registrable as a trade mark. If a trade mark is associated with the registered name of a variety, the registered name must be easily recognisable. An association between the two may put the trade mark at risk of becoming generic, particularly where the two are fanciful names. Thus, a bland name or a code could be registered as the variety denomination. But this may not avoid the risk either; indeed it may increase it, since the fanciful trade mark may be the more memorable by far for the public. The answer to this problem lies in the breeder using, and ensuring that his licensees use, the trade mark properly.
[9] On-line commentary at lexisnexis.com.au, accessed 28 August 2013
[10] A basic principle of breeders' rights law is "one variety, one name": cf Deciduous Fruit Board v Registrar of Plant Breeders' Rights (1997) UPOV Plant Variety Protection, April 1997 (Issue 81), p 31 (Appeal Board, South Africa), where different names for the same variety caused problems.
I am satisfied that the applicant is, as stated above, effectively the guardian of the names applied to its particular Paspalum plant for the term of the PBR grant. After that date it loses the right to restrict use of either of the names it has chosen to enter upon the PBR register in respect of the specific Paspalum plant. Registration of a trade mark is not subject to a fixed term and the presence on the Trade Marks Register of the Trade Mark after expiry of the PBR grant would effectively preclude any use of the officially accepted varietal name and its synonym (which after 20 years is likely to be well accepted by the trade) by other interested parties. Such an action goes against the intent of the PBR Act. I am thus satisfied that it is clear that registration as a trade mark of the registered name of a plant variety and/or of its designated trade reference or synonym is inappropriate.
Decision
Section 33 of the Act provides:
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
(2) The Registrar may accept the application subject to conditions or limitations.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
I am satisfied that there is a ground for rejecting application 1469889 pursuant to section 41(6) of the Act. I reject trade mark application 1469889.
Appeal provisions
This decision may be appealed in the Federal Court or the Federal Circuit Court (formerly the Federal Magistrates Court). Please note the time limits for filing an appeal in Rules 34.24(1) and (3) of Chapter 3 Part 34 Division 34.3 Intellectual Property of the Federal Court Rules. The effect of these Rules is that:
· A Party who wants to appeal from a decision of the Registrar of Trade Marks must file a notice of appeal at the Federal Court within 21 days of the date of the decision.
· The party filing the appeal must serve a copy of the notice of appeal on the Registrar of Trade Marks and each other party to the appeal within 5 days after filing the notice of
Alison Windsor
Hearing Officer
Trade Marks Hearings
23 September 2013
(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.
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