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Examination of Trade Marks for Plant Material in Class 31

This resource provides an examination of trade marks for plant material in Class 31, including interactions with other legislation, common grounds for rejection, and the basics of plant naming conventions.

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Examination of Trade Marks for Plant Material in Class 31

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  1. Examination of Trade Marks for Plant Material in Class 31 November 2017

  2. Plant marks are special • Interaction with other legislation • s41(3) gfr is common (but doesn’t need to be cleared with a team leader); s43 is also common • 1st reports can be complex (eg. 2 or 3 gfr & the need to customise WP codes) • exclusions are often used to overcome objections • extra half a stat for the first report

  3. Legislation and Influences • Trade Marks Act (1995) • Plant Breeder’s Rights Act (1994) • International Convention for the Protection of New Varieties of Plants (UPOV Convention) • International Code of Nomenclature for Cultivated Plants (ICNCP)

  4. The basics – plant material in Class 31 Class heading: Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals, malt • Plant material includes all parts of the plant – eg. fruit, flowers, timber, seeds, vegetative cuttings, other live plant tissues • Claims for “animal foodstuffs”, “litter” and “mulch” need to be considered as plant material if the goods notionally include seeds, grains, or other propagating material such as live vegetative cuttings

  5. The basics – scientific nomenclature (plant naming conventions) Plants have a series of names based on botanical hierarchy: • (1) Kingdom (2) Division (3) Class (4) Order (5) Family – all of which rarely concern us • (6) Genus (7) species (8) ‘Cultivar’ – which always do – Cultivar (or variety or denomination) most of all!

  6. The basics – plant names Plants also have common names - not official nomenclature: • a single Genus or species can have more than 1 common name (eg. common name for Westringia is native rosemary or coastal rosemary) • a single common name (eg. Daisy) can apply to plants from several genera (eg. Aster or BrachyscomborRhodanthe)

  7. The basics – plant names • the Genus: Lavandula(common name: lavender) • the species:[eg.] augustifolia(English) or dentata(French) or stoechas(Italian or Spanish) • the ‘cultivar’: ‘Hidcote Pink’ or ‘Candicans’ or ‘Merle’ etc. Lavandulaaugustifolia‘Hidcote Pink’ Lavandulaaugustifolia‘Royal Velvet’ Lavanduladentata‘Candicans’ LavandulastoechasL.‘Merle’

  8. The basics – plant names • Cauliflower: Brassica oleraceavar. botrytis ‘Igloo’ [“var.”= naturally occurring variety; also known as “subspecies”] • Broccoli: Brassica oleraceavar. italica‘Arcadia’ • Cabbage: Brassica oleraceavar. capitata‘Cannonball’ • Turnip: Brassica rapa‘Royal Globe’ • Beetroot and Silverbeet (Swiss Chard) are both members of the Beta species vulgaris • Potatoes and tomatoes are both members of the Solanum genus

  9. Resources • TM Examiners’ Manual – Part 32A • Special Marks examiner resources – Manual Part 64.7.2 • Nomenclature and Treaties & useful databases (Plant Resources LibGuide– link in Part 64.7.2) • Plant group Manager - Clara Witheridge (x2566) • Plant SMEs – Ros Tasker (x2279) & Sarah Elliott (x2974) • Other examiners authorised to examine plant marks

  10. Where to get tasks

  11. Research PBR Search access is easiest from the bottom of the intranet (or you can get to it from the PBR workbench or the link in the Searching the PBR database resource – Manual Part 64.7.2)

  12. Research • as per standard exam for general, non-plant issues (eg. geog; general descriptions like ‘leafy’) • guidance in the “specific research” resource - MPP 64.7.2 • Links on the LibGuide – “plant resource tools” in the Research facility takes you there – also in MPP 64.7.2 • UPOV Pluto database (good but not a 1 stop shop)

  13. Grounds for rejection: Section 39 – Prescribed signs Under Regulation 4.15(a), the following are prescribed signs and should not form part of a trade mark: • the words ‘Plant Breeders Rights’ • the PBR symbol: (with or without the letters PBR) • the letters PBR (in the context of indicating ‘Plant Breeders Rights’)

  14. Grounds for rejection: Section 41 – Capacity to Distinguish • name of the thing • plant names can’t become distinctive as a trade mark “through use” • trade mark v. “trade name”/ “trade reference” • does the plant name apply to the scope of claimed goods?

  15. Grounds for rejection: Section 41 – Capacity to Distinguish Enough get up? Example 1Example 2 (‘Eternity’ is a cultivar of Rosa) (‘Hot Lips’ is a cultivar of Petunia) Yes No

  16. Grounds for rejection: Section 42 – Contrary to Law A trade mark should not infringe protection provided by the Australian Plant Breeder’s Rights Act. That is when • the trade mark material is substantially similar to a plantvariety name or synonym of an accepted or granted PBR AND • the claimed Class 31 goods  are notionally  of the plant type for which the PBR  is listed AND • the owner of  the trade mark application is a different entity to the title holder of the PBR

  17. Grounds for rejection: Section 43 – Deception and Confusion • If a trade mark includes the name of a particular plant, use on similar plants would be deceptive or confusing • Deception or confusion is less likely if the plants are very different (eg. a rose and a fruit tree could have the same name without confusion) • Deception or confusion is more likely if the goods look similar (eg. seeds or bulbs or grasses)

  18. Grounds for rejection: Section 43 – Deception and Confusion • Example 1: • Example 2: BUTLER GOURMET PANTRY • Example 3: SERVING THE PERFECT FINISH

  19. Grounds for rejection: Section 44 – Comparison of Trade Marks • considerations are no different from non-Class 31 applications – generic v. distinctive material • Similar goods in other classes - see conflicting g/s list on the workbench • Similar goods within Class 31 – see Manual chapter Part 32A 2.5

  20. The worksheet

  21. Grounds for rejection based on plant names Example: The following entry exists on the PBR Register: Common Name: Swamp Maple Botanical name: Acer rubrum Variety name: Fairview Flame Status: Accepted A trade mark application for FAIRVIEW FLAME covering “live plants” (where the applicant is not the PBR holder) would attract gfr under s41, s42, and s43. Ways to overcome • Exclusion: Live plants, excluding plants and plant material of the genus Acer, OR • Restriction: [eg.] Live bedding plants

  22. Grounds for rejection based on plant names Example: Malusdomestica‘Scarlet Sentinel’ does not appear on the PBR Register but the name is used in the market place. A trade mark application for SCARLET SENTINEL covering “apples” would attract gfr under s41 and s43. Ways to overcome • WP code “other plant action”: [eg.] “Please provide information regarding the specific nature of your goods and examples of your intended trade mark use in relation to those goods”

  23. Thank you Any questions?

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