This case concerned an application to have a response to an adverse Examiner’s report heard by the office. The relevant application was in respect of the mark SIR WALTER, and registration was sought in respect of several classes, all concerned in some way with products used in relation to the genus of turf by the same name as the mark.

The Examiner’s report stated that this is a term to which other trader’s will want to refer, as it refers to a genus of plant variety, specifically a type of grass. This was therefore a concern under section 41(6) of the Trade Marks Act.

The Examiner in the report also referred to s43 and its application where the registration of a mark is likely to deceive or cause confusion, for the same reason as discussed above, i.e. it is a reference to a genus of plant.

By way of background, the applicant was the registrant of the Sir Walter plant variety on the Register of Plant Breeder’s Rights, that registration having been granted in March 1998, and expiring after a period of 20 years (due to expire in 2018).

The Delegate considered s41 as to whether the marks were capable of distinguishing the goods of the applicant, and considered that the mark lacked an inherent adaption to distinguish the goods of the applicant.

However, it was submitted that the use of the mark up until the application warranted the registration under s 41(6) which allowed registration of marks where the extent of use prior to the application distinguishes the applicant’s mark.

The Delegate was of the opinion however that:

  • in many instances where the mark was used, it was in composite with a knight on a horse device and not on its own; and
  • in most other instances where it was used alone, it was descriptive in nature.

The application was therefore rejected.

This case raises an interesting question for Plant Breeder’s when naming and branding there new plant varieties.

To view the Office decision, click here.