2.6 Plant varieties

Plant varieties are a type of intellectual property and are protected under the Plant Variety Rights Act 1987.

The grant of Plant Variety Rights for a new plant variety gives the holder the exclusive right to produce for sale and to sell reproductive material of that plant variety. In the case of vegetatively-propagated fruit, ornamental and vegetable varieties, the grant of Plant Variety Rights gives the holder the additional exclusive right to propagate the protected variety for the purpose of the commercial production of fruit, flowers or other products of that variety. A grant of Plant Variety Rights lasts for 23 years in the case of woody plants or their rootstock, and 20 years in every other case.

Where Plant Variety Rights have been granted, the plant variety concerned will be identified by a “denomination”. A plant variety denomination serves to distinguish plants of a particular variety from plants of other varieties. Section 2 of the Plant Variety Rights Act 1987 defines “denomination” as follows:

Therefore, a plant variety denomination serves to distinguish plants of a particular variety from plants of other varieties even after the Plant Variety Rights grant in question has expired.

A trade mark that is the same as or similar to a plant variety denomination, in respect of plants or plant material, is likely to make consumers believe that the goods on which the trade mark is used belong to the plant variety that the denomination denotes. Consumers are likely to be deceived or confused if this were not the case.

An examiner should raise a concern under section 17(1)(a) of the Act where:

• The mark consists of or contains the denomination pertaining to a plant variety in respect of which a grant was made under the Plant Variety Rights Act 1987;
• The grant in question is either still in force, or is no longer in force;
• The trade mark application is in class 31 in respect of plants or plant material;⁸
• The trade mark specification is not limited only to plant material that belongs to the specific plant variety that the denomination denotes; and
• The trade mark specification covers plant material that is of the same type as the plant matter that the denomination denotes.

Where the grant in question is still in force, the examiner should also raise concerns that the mark is not registrable under section 17(1)(b) of the Act, as the use of the mark would be contrary to section 17(7) and section 37(3)(b) of the Plant Variety Rights Act 1987.

To overcome an examiner’s concern under this heading, the applicant may limit the specification to plant material that belongs to the specific plant variety that the denomination denotes. However, as a plant variety denomination serves to distinguish plants of a particular variety from plants of other varieties, it is incapable of distinguishing trade origin. Should the applicant agree to limit the specification in this way, any registrability objection raised under section 18 of the Act that the mark lacks distinctive character will still remain outstanding.

Alternatively, an applicant may limit the specification so that it no longer covers the same type of plant material as the plant matter that the denomination denotes. Deception or confusion is unlikely, if the specification of the application concerned does not cover plant material that is of the same type as the plant matter that the denomination denotes.

For example, the applicant applies to register as a trade mark a plant variety denomination that denotes a type of rose, in respect of the specification “plants, including vegetables”. The applicant subsequently requests that the specification be limited to “pumpkins”. Where a trade mark is the same as or similar to a plant variety denomination in respect of a type of rose, and that trade mark is used in relation to pumpkins, consumers are unlikely to be deceived or confused into believing that the pumpkins belong to the plant variety that the plant variety denomination denotes (being a type of rose).

Footnote

⁸ Plant material includes all parts of the plant, including seeds, fruits, flowers, vegetables and vegetative matter.