Australia: Protecting your turf with trade marks and Plant Breeder's Rights

Sir Walter is a variety of turf grass (Stenotaphrum secundatum) for which Buchanan Turf Supplies Pty Ltd ("Buchanan") was granted Plant Breeder's Rights (PBR) in 1998. The PBR is set to expire in 2018. The case concerned a trade mark application by Buchanan for the word "SIR WALTER" in respect of goods and services in a number of classes, including Class 31: Turf grass.

Background

Under section 53(1)(c) of the Plant Breeder's Rights Act, PBR is infringed by a person using the name of a registered variety in relation to any other plant variety of the same plant class, or a plant of any other variety of the same plant class. This provision aims to protect the PBR owners from third parties exploiting the reputation associated with the name of an elite variety. Given the strong reputation that Sir Walter has acquired in Australia as an elite variety of turf, Buchanan sought to extend their rights to the name "SIR WALTER" by applying for a trade mark of the same name.

Section 27 of the Plant Breeder's Rights Act sets out a number of restrictions for the naming of plant varieties. Among them, a name must not include a trade mark that is registered, or whose registration is being sought in respect of live plants, plant cells and plant tissues. However, there are no express provisions in the Plant Breeder's Rights Act or the Trade Marks Act which prohibit the registration of a trade mark for a plant variety. The problem that Buchanan faced was the fundamental requirement for the registration of a trade mark in Australia, ie, the mark must be capable of distinguishing the trade mark owner's goods from those of other persons.

In deciding whether a trade mark may be registered, the Registrar will consider the extent to which the mark is inherently adapted to distinguish and, if necessary, the extent to which the applicant has used the mark. A random collection of numbers and letters with no descriptive meaning would be an example of a mark which is inherently adapted to distinguish and which would not require evidence of use for registration. If the mark is descriptive of the goods or services in question, it will lack an inherent adaptability to distinguish and the applicant will need to demonstrate that the mark has been used in such a way as to impart it with a secondary, ie, non-descriptive, meaning.

The decision

The Federal Court of Australia held that the name "SIR WALTER" is a descriptive term and is entirely devoid of an inherent adaptability to distinguish. Although the variety itself is distinct from other varieties of common knowledge (PBR Act s 43), the name SIR WALTER was not being used to distinguish one trader's goods from those of another. It was merely designating the variety itself. In other words, the name SIR WALTER serves a single purpose – to define exactly the variety of grass it refers to.

In the absence of any inherent ability to distinguish, the representatives of Buchanan submitted evidence of prior use in an attempt to show that the name had acquired a secondary meaning. Although the name SIR WALTER had been used extensively in television, radio and print media advertising, the evidence overwhelmingly showed that SIR WALTER had been used to designate the variety itself. It had not been used to distinguish the applicant's grass from other trader's grass. Accordingly, the court found that the trade mark application should not proceed to acceptance unless the specification is amended by deleting reference to the Class 31 goods.

Lessons

PBR applicants should be aware that the exclusive rights to use the name of a variety which PBR provides expire with the PBR itself. To extend this period of exclusivity indefinitely, a PBR applicant should consider registering their preferred trade name for the variety as a trade mark and applying for PBR under a different name. International applicants should, however, bear in mind that under section 27 of the Plant Breeder's Rights Act the name of the variety set out in an Australian PBR application must be the name under which PBR was first granted in another contracting party.

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