The recent Federal Court decision of Buchanan Turf Supplies v Registrar of Trade Marks (link) deals with the interaction between trade marks and variety names of plants that are the subject of plant breeder’s rights (PBRs). The Court upheld the Registrar’s refusal of an application for the trade mark SIR WALTER for turf grass in circumstances where Buchanan had earlier obtained a PBR for a variety of grass named “Sir Walter”. The Court held that, once Buchanan had named the variety “Sir Walter” in obtaining a PBR, the trade mark SIR WALTER lacked any inherent adaptation to distinguish grass of that variety. The Court distinguished the Mastronardi case (link) (ZIMA for tomatoes allowed), where there was unchallenged evidence that ZIMA was not the name of any variety of tomato.
The Court also held that Buchanan’s pre-filing uses of “Sir Walter” would have been understood as references to the Sir Walter variety, not uses as a trade mark. This seems surprising. Take one example, a spoken voiceover in a TV commercial: “You can’t always spot an imitation. Take lawns – there’s only one genuine Sir Walter. That’s why you will find over 24 million metres of it Australia wide”. It is not clear why members of the public, without knowledge or expertise in varieties of turf, would not consider that use of “Sir Walter” to be a reference to a brand of turf, rather than a variety of turf.
Given Buchanan’s substantial investment in the Sir Walter brand, and the imminent expiry of the PBR in March 2018, it will be interesting to see whether the decision is appealed.
Given the Buchanan decision, breeders of new plant varieties would be well-advised to adopt different trade marks and variety names to preserve and enhance their investment in branding plants and produce.