Under Canada’s intellectual property laws, plant breeders may apply to protect their plant varieties by applying for a plant variety denomination pursuant to the Plant Breeders’ Rights Act. Similarly, Canadians may protect their brands by applying to register trademarks pursuant to the Trademarks Act. Clearly, trademark owners and plant breeders seeking to protect their respective intellectual property rights should be cognizant of the intersection between these two pieces of legislation.

Denominations under the Plant Breeders’ Rights Act

A plant breeder may apply under the Plant Breeders’ Rights Act (“PBRA”) to obtain protection for any “plant variety”, excepting algae, fungi, and bacteria. Under the PBRA, a plant variety is a plant grouping defined by a set of unique, genetically-governed characteristics which will not change upon reproduction of the plants in the grouping.

Plant Breeder’s Rights enable a plant breeder to protect a plant variety by managing and controlling the use of propagating material such as seeds. Plant Breeder’s Rights are granted for a term of either 20 or 25 years, depending on the category of plant variety. After the term of protection expires, that plant variety may be used freely in Canada.

As part of the application, a plant breeder must propose a denomination for their plant variety. A denomination is the designation by which a registered plant variety will be identified and protected. If the plant variety is known or marketed by a particular denomination in another country, that denomination must be used in Canada to name and protect that plant variety.

A denomination must conform to “prescribed requirements” and must not be “likely to mislead or to cause confusion concerning the characteristics, value or identity of the plant variety in question or the identity of its breeder”. Although the Commissioner of Plant Breeders’ Rights may reject a proposed denomination if it is considered unsuitable for any “reasonable cause”, the PBRA and its regulations do not prescribe detailed requirements for the suitability of a proposed denomination. However, the Plant Breeder’s Rights Office does publish a set of naming guidelines for registration of plant varieties, which provide that no part of a proposed denomination can be a trademark registered in Canada in order to avoid restrictions on the free use of plant varieties after plant breeders’ rights have expired.

The PBRA also contemplates the use of an entity’s trademark or trade name “in association with” an approved denomination. Where a trademark, trade name, or other similar indication is used in association with an approved denomination, the denomination must be “easily recognizable”. For example, the approved denomination of a Petunia variety may be PT123 but the breeder may wish to market the variety as Snow Flake. In this case, propagating material could be sold as PT123 or as PT123 Snow Flake, but not as Snow Flake alone.

Plant Variety Denominations and the Trademarks Act

Regard must also be had to multiple provisions of the Trademarks Act to understand its treatment of plant variety denominations. Specifically, Section 10.1 of the Trademarks Act prohibits the adoption of a plant variety denomination, registered pursuant to the provisions of the PBRA, as a trademark in association with the plant variety or another plant variety of the same species. Also prohibited is the use of such a plant variety denomination in a way that is likely to mislead, and use or adoption of any trademark so nearly resembling such a registered denomination as to be likely to be mistaken therefor. Section 11.1 of the Trademarks Act also prevents the use of a denomination that would contravene section 10.1 in connection with a business, as a trademark or otherwise.

In order to weed out trademarks that are not registrable, trademark examiners will search the database of registered Canadian plant varieties maintained by the Plant Breeders’ Rights Office.

Conclusion

There are practical considerations with respect to the intersection between the Plant Breeders’ Rights Act and the Trademarks Act when registering for Plant Breeder’s Rights in Canada, or when registering a trademark that may be similar to a registered plant variety denomination. Prospective registrants are thus best advised to consult local trademark counsel that can help navigate the intricacies of the IP landscape to ensure that commercial objectives are optimized.