Sir Walter is a variety of turf grass (Stenotaphrum
secundatum) for which Buchanan Turf Supplies Pty Ltd
("Buchanan") was granted Plant Breeder's Rights (PBR)
in 1998. The PBR is set to expire in 2018. The case concerned a
trade mark application by Buchanan for the word "SIR
WALTER" in respect of goods and services in a number of
classes, including Class 31: Turf grass.
Under section 53(1)(c) of the Plant Breeder's Rights
Act, PBR is infringed by a person using the name of a
registered variety in relation to any other plant variety of the
same plant class, or a plant of any other variety of the same plant
class. This provision aims to protect the PBR owners from third
parties exploiting the reputation associated with the name of an
elite variety. Given the strong reputation that Sir Walter has
acquired in Australia as an elite variety of turf, Buchanan sought
to extend their rights to the name "SIR WALTER" by
applying for a trade mark of the same name.
Section 27 of the Plant Breeder's Rights Act sets
out a number of restrictions for the naming of plant varieties.
Among them, a name must not include a trade mark that is
registered, or whose registration is being sought in respect of
live plants, plant cells and plant tissues. However, there are no
express provisions in the Plant Breeder's Rights Act
or the Trade Marks Act which prohibit the registration of
a trade mark for a plant variety. The problem that Buchanan faced
was the fundamental requirement for the registration of a trade
mark in Australia, ie, the mark must be capable of distinguishing
the trade mark owner's goods from those of other persons.
In deciding whether a trade mark may be registered, the
Registrar will consider the extent to which the mark is inherently
adapted to distinguish and, if necessary, the extent to which the
applicant has used the mark. A random collection of numbers and
letters with no descriptive meaning would be an example of a mark
which is inherently adapted to distinguish and which would not
require evidence of use for registration. If the mark is
descriptive of the goods or services in question, it will lack an
inherent adaptability to distinguish and the applicant will need to
demonstrate that the mark has been used in such a way as to impart
it with a secondary, ie, non-descriptive, meaning.
The Federal Court of Australia held that the name "SIR
WALTER" is a descriptive term and is entirely devoid of an
inherent adaptability to distinguish. Although the variety itself
is distinct from other varieties of common knowledge (PBR Act s
43), the name SIR WALTER was not being used to distinguish one
trader's goods from those of another. It was merely designating
the variety itself. In other words, the name SIR WALTER serves a
single purpose – to define exactly the variety of grass it
In the absence of any inherent ability to distinguish, the
representatives of Buchanan submitted evidence of prior use in an
attempt to show that the name had acquired a secondary meaning.
Although the name SIR WALTER had been used extensively in
television, radio and print media advertising, the evidence
overwhelmingly showed that SIR WALTER had been used to designate
the variety itself. It had not been used to distinguish the
applicant's grass from other trader's grass. Accordingly,
the court found that the trade mark application should not proceed
to acceptance unless the specification is amended by deleting
reference to the Class 31 goods.
PBR applicants should be aware that the exclusive rights to use
the name of a variety which PBR provides expire with the PBR
itself. To extend this period of exclusivity indefinitely, a PBR
applicant should consider registering their preferred trade name
for the variety as a trade mark and applying for PBR under a
different name. International applicants should, however, bear in
mind that under section 27 of the Plant Breeder's Rights Act
the name of the variety set out in an Australian PBR application
must be the name under which PBR was first granted in another
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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