Trade marks and plants
Plant breeders or traders can seek trade mark registration for plants. Class 31 of the Trade Marks Act 1995 protects agricultural, horticultural and forestry products and grains; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals and malt.
Plant Breeders Rights Act 1994
Registered plant variety names can not be or include a trade mark that is registered with us in respect of 'live plants, plant cells and plant tissues'. Any existing trade mark in these categories will be considered when accepting or rejecting proposed names.
The Act also does not permit the use of a trade mark for which an application has already been submitted with us. If the trade mark application has expired or not been renewed within the given deadline, then that trade mark would be available for a new plant variety name. However, if the trade mark has been established as a common law trade mark in use, it would be difficult to see its use as a plant variety name.
Applications for plant varieties
Only trade mark applications for plant and plant products that match the criteria for Class 31 will be considered. The Trade Mark Database (ATMOSS) is searched to rule out new plant variety names that may infringe on another party's trade mark
Some invented plant names appear as varieties or synonyms on the PBR register. These are precluded by trade mark legislation from being registered as trade marks. Plant names that appear on the PBR register will be difficult to register as trade marks.
Purpose of trade mark
The purpose of a trade mark is to distinguish the goods or services of one trader from those of another. To achieve this, a proposed trade mark should be:
- applied to a number of different plants
- if applied to a single plant, always applied in conjunction with the accepted scientific, common and variety/cultivar names for that plant
Words only used to describe, define, or name a particular plant don't fulfil the trade mark requirements of the Trade Marks Act 1995. This applies to any plant material or produce that needs to be identified by type or kind, including live plants, seedlings, seeds, grains, fruits and vegetables, flowers and reproductive material.
In the plant industry, plant names, often called variety denominations, are used to name and identify particular plants and differentiate them from other plants. Plant names are subject to scientific and plant industry naming conventions and fall into a number of different categories:
- scientific nomenclature (particularly genus and species, which identify every plant by a unique binomial)
- invented names to further differentiate plants within the same genus and species (often referred to as varieties or cultivars)
- alternative invented names (often called synonyms)
- common names, which often reflect a characteristic of the plant.
|Genus||Species||Variety/ cultivar||Synonym||Common name|
|Acacia||Cardiophylla||'Gold Lace'||Kuranga Gold Lace||Wyalong Wattle|
|Acacia||Baileyana||'Purpurea'||n/a||Purple Leaf Cootamundra Wattle|
Note: These plant names cannot perform the function of a trade mark.
Examples of plant names and words operating as a trade mark
The following examples use hypothetical trade marks and both real and hypothetical plant names to illustrate the difference between plant names and words operating as trade marks.
A trader known as 'Crazy Elephant Nurseries' sells a plant known by the common name 'Wyalong Wattle'. This plant has the cultivar name 'Gold Lace', which is registered with the Australian Cultivar Registration Authority and is in the public domain. Crazy Elephant Nurseries attaches a label to the plants displaying the following information:
Acacia cardiophylla 'Gold Lace'
However, when the owner of the Crazy Elephant Nursery visits a competitor and finds the same plants labelled exactly the same way (as they are entitled to do), he realises that none of these words act as a trade mark. He realises he needs to apply different words or images to the label to distinguish their plants from the same plants of their competitor. He attaches the following label:
Acacia cardiophylla 'Gold Lace'
The words 'Crazy Elephant' are successfully operating as a trade mark. No other traders need to use those words on the same plants and buyers know they are buying an Acacia of the type 'Gold Lace' provided by Crazy Elephant.
The trade mark is strengthened when Crazy Elephant Nurseries applies it to a second plant, also of the genus Acacia, in the following way:
Purple Leaf Cootamundra Wattle
Acacia baileyana 'Purpurea'
Crazy Elephant Nurseries cultivates a new Acacia cardiophylla and uses the name 'Baggy Pants' to differentiate it from the cultivar known as 'Gold Lace'. It considers applying for 'Baggy Pants' as a trade mark, but as this name is being applied as the name of the cultivar, it should be available for use by others who market the same cultivar and cannot be accepted as a trade mark.
As the nursery has already established a trade mark (Crazy Elephant), which distinguishes its goods from the goods of others, it decides on the following label:
Acacia cardiophylla 'Baggy Pants'
It would be useful however, to sufficiently distinguish the trade mark by inserting a ® (for a registered trade mark) or TM symbol after the common law trade mark. In the same way using the PBR logo after the PBR protected variety name will further enhance the distinctness between trade mark and plant variety name:
Crazy Elephant ®
Acacia cardiophylla 'Baggy Pants' (insert PBR logo here)
Read about the Pink Lady trade mark in our case study - Trade Marking a Fruit Variety.
Explanation of some trade mark conditions
If words that you invented to name a new plant variety are applied to the plant for the purpose of naming or describing that particular plant, it cannot act as a trade mark because it will not distinguish the goods of one particular trader.
It is possible for different words than those used for the PBR name to operate as a trade mark, even if they are applied to a single plant (your registered PBR variety). This will depend on how you use and protect it.
The words should be used to indicate the plants of one trader, rather than name the plant (which may be obtained by that name from a number of traders). If the words simply replace the PBR registered name, they will act as an alternate name or synonym and will be difficult to register as a trade mark.
If there is no clear evidence of the use of the trade mark applicant's wording as a plant name available at the time of examination, an application may be accepted. However, if the owner of that trade mark subsequently uses it to name or describe a single plant, not only will their registration not function as a trade mark, but their trade mark rights could be open to challenge.
Plant trade mark registration can carry an endorsement (called a 'condition of registration'), which says the trade mark cannot be used as the name of a plant variety.
Trade mark disputes
Enforcement is the responsibility of the trade mark owner. We do not police the marketplace, but we have an arbitration role in some disputes occurring in the period between acceptance and registration. Any challenge after registration must be instigated by an aggrieved party in the marketplace and pursued through the courts.
Further information and seeking professional advice
Further information on trade marks is available on this website. For specific assistance and advice you can contact an IP professional.
Last Updated: 28/11/2013