02 August 2015

Turf Wars! Why Owning a ‘Plant Patent’ Does Not Grant Control of the Variety Name

Sir Walter Turf‘Sir Walter’ is a variety of buffalo grass that has proven to be extremely popular in Australia.  It was developed in around 1996 and is described as ‘a grass that was more resilient to disease, pests and fungus than other grasses.  It was drought resistant, thrived in shade and sun and stayed green and lush throughout the year.’

The Sir Walter variety is protected by Plant Breeder’s Rights (PBR’s), granted under the Plant Breeder’s Rights Act 1994 (the PBR Act).  Australian PBR’s perform a similar function in Australia to Plant Patents in the US.  Generally speaking, PBR’s are rights granted to the breeder of a new variety of plant that provide exclusive control over propagating materials, such as seeds, cuttings, divisions, tissue culture, and so forth, for up to 20 years (25 years in the case of trees and vines).

Protection for the Sir Walter variety under the PBR Act will expire on 27 March 2018.  Until this date, Buchanan Turf Supplies Pty Ltd (the company that owns the PBR) essentially controls all production and sale of Sir Walter turf in Australia.  After that date, other traders will be free to cultivate, reproduce and sell the Sir Walter variety in competition with Buchanan Turf Supplies.

Over the time it has had exclusive rights to the Sir Walter variety, Buchanan Turf Supplies has marketed it strongly.  It owns the Internet domain ‘sirwalter.com.au’, and had advertised through just about every applicable medium, including television, radio, print, fixed and mobile signage, and point-of-sale (i.e. nurseries).  All of this promotion has prominently featured the Sir Walter name, and educated the public as to the benefits of the variety.  Recently, Buchanan Turf Supplies has sought to register the name SIR WALTER as a trade mark.

There is just one (big) problem with this.  When used in relation to grass, ‘Sir Walter’ is not a trade mark, it is a variety name.  And while ‘a rose by any other name would smell as sweet’, we would have some difficulty conducting a conversation about the fragrance of the rose if we were unable to agree on a common name to signify the flower in question.  Which is why – as Buchanan Turf Supplies is finding out the hard way in Federal Court – you cannot ‘own’ a variety name, even if you were the one to coin it, and have effectively had control over its use for the better part of 20 years: Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756.

A better strategy is to have two different names: one for marketing purposes; and another for the common name of the variety.

Background – Genesis of ‘Sir Walter’

Development of the variety of buffalo grass that was to be called ‘Sir Walter’ was undertaken by Mr Brent Redman in around 1995.  Mr Redman and his wife are the directors, and only shareholders, of Buchanan Turf Supplies.  A application was filed under the PBR Act on 30 September 1996, and on 1 November 1996 provisional protection was granted.  Full protection was granted on 27 March 1998, and will expire after its 20-year term on 27 March 2018.

There is no question that Mr Redman was also responsible for choosing the name ‘Sir Walter’, i.e. that this name was associated with a turf product for the first time as a result of Mr Redman’s choice, and came to be known by the public as a result of the marketing efforts of Buchanan Turf Supplies.  ‘Sir Walter’ would doubtless have made a excellent trade mark for turf products.  However, as I shall explain, it was a strategic error to use this as the variety name.

Variety Names and Trade Marks

There are rules for variety names set out in section 27 of the PBR Act.  The purpose of these rules is generally to try to ensure that naming of new plant varieties is globally consistent, and that new variety names are available for general descriptive or nominative use in the same way as the long-standing names of naturally-occurring plant varieties.  For this reason, one of the rules is that a plant variety name cannot ‘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.’

As the Federal Court says, at [19] of its Buchanan Turf Supplies decision:

This provision appears to recognise that, while the rights associated with a registered trade mark are potentially of indefinite duration, a PBR is a qualified right having a fixed term. It appears to give voice to a policy that, in relation to propagating material of a particular plant variety, activities falling outside a PBR, or activities carried on after the term of a PBR has expired, involving use of the plant variety name should not be impeded by the monopoly rights granted under the Trade Marks Act with respect to trade marks.

This provision prevents registration of a PBR if, at the time the application is under consideration, there is a registered or pending trade mark.  However, as the court goes on to point out, there is nothing to prevent a trade mark application being filed after the PBR has been registered:

That said, there is nothing in the Trade Marks Act itself which provides that the name of plant variety for which a PBR exists cannot be registered as a trade mark. Registrability under the Trade Marks Act is to be determined by its provisions directed to that question.

On the face of it, you might think that Buchanan Turf Supplies would satisfy the requirements of the Trade Marks Act to obtain registration of Sir Walter.  Until Mr Redman came up with the name, there was no prior association between turf products and the term ‘Sir Walter’.  The name was therefore, at least in 1996, inherently capable of distinguishing the turf products of Buchanan Turf Supplies from the similar products of other traders.  Furthermore, by virtue of the exclusive rights granted by its PBR registration, at this stage there is no other entity in Australia that could claim to possess any reputation in association with Sir Walter buffalo grass.  Right now, Buchanan Turf Supplies is the source, either as grower or as licensor to other growers, of all Sir Walter turf in Australia.

Variety Names Have No Inherent Capacity to Distinguish

In most circumstances, the above facts would entitle Buchanan Turf Supplies to registration of SIR WALTER as a trade mark.  But where would that leave other traders when the PBR expires in 2018?  What would we all call the variety of buffalo grass first developed by Mr Redman in around 1995 if its only official recorded variety name has been withdrawn from general commercial use by virtue of trade mark registration?

While many issues were considered by the Federal Court in its 136 paragraph decision, its solution to this apparent conundrum can be summed up quite briefly.  In effect, as soon as a word or phrase is registered as the name of a plant variety under the PBR Act, it is treated as being wholly descriptive of the variety.  Thus, even though it may be a completely new and invented term, with no prior association with the plant species in question, it is automatically regarded as having absolutely no inherent capability to distinguish the corresponding goods of any one trader (see the judgment at [55], for example).  You might just as well try to register the word ROSE in relation to roses, for all the good it would do you!

Can Variety Names Acquire Distinctiveness?

With regard to acquired distinctiveness – i.e. that the name ‘Sir Walter’ has become uniquely associated with turf products supplied or controlled by Buchanan Turf Supplies due to extensive use and promotion – the position would seem to be less clear-cut.  During the period of the monopoly provided by registration under the PBR Act, a registrant can certainly use the variety name in any manner it wishes, including those that would normally be regarded as trade mark use, and which would generally result in consumers being educated as to the existence of a unique association between the variety and the supplier.

In addressing the evidence of use, the court concluded that every single time Buchanan Turf Supplies used ‘Sir Walter’ it was doing so descriptively.  There being only ‘descriptive’ use, and not ‘trade mark’ use, the evidence could not show acquired distinctiveness as a trade mark.

Reading between the lines, the court appears to have created something of a legal fiction that, at least during the period of a PBR registration, there is no such thing as ‘non-descriptive’ use of a plant variety name.  Otherwise, this decision will simply serve as a guide to future PBR-holders as to what to avoid if they are trying to acquire trade mark rights in their plant variety names!

How To Avoid the Problem

Arguably, Mr Redman’s ‘mistake’, after coming up with a great name for his newly-developed turf, was to use that name for the variety rather than keeping it for use as a trade mark by Buchanan Turf Supplies.  He could have come up with a second, and much less distinctive, term to identify his new variety.

Subsection 27(4) of the PBR Act requires that a variety name must be a word, or words (whether invented or not) and may additionally include letters and/or figures that do not constitute a word.  Thus, for example, ‘Turf 1995A’ is a valid variety name (assuming it meets all of the other requirements) which might have been a better choice for Buchanan Turf Supplies’ PBR application, while SIR WALTER could have been the subject of a new trade mark application.

Conclusion – Salvaging the Situation?

It is likely that Buchanan Turf Supplies will be able to salvage something from the unfortunate situation in which it finds itself.  The PBR registration still has over two and a half years to run before competitors will be able to produce and sell Sir Walter buffalo grass.  During this time, Buchanan Turf Supplies will need to engage in a process of educating the market that it is the originator, and thus the most reliable and best quality source, of Sir Walter turf.

It appears that a strategy along these lines may already be under development.  In February this year Buchanan Turf Supplies filed a new trade mark application for a logo comprising the words SIR WALTER DNA CERTIFED in combination with a fingerprint image.  This suggests a future plan to market its product – and perhaps also to provide certification services to others – with a guarantee that it is the original and ‘genuine’ Sir Walter variety.

However, for those just starting out developing and marketing a new plant variety, the message is clear: come up with two names – the great one that you want to use for marketing, and a drab one that you can use to name the variety in your PBR application.


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