3.1.6 The Plant Variety Rights Act 1987

Section 17(7) of the Plant Variety Rights Act 1987 states:

The sale under the denomination of a protected variety of reproductive material of some other variety constitutes an infringement of the rights under this section of the grantee of that protected variety, unless the groups of plants to which those varieties belong are internationally recognised as being distinct for the purposes of denomination.

Pursuant to section 17(7) of that Act, the sale of reproductive plant material under a denomination that denotes a protected plant variety infringes the rights of the grantee of that protected variety, unless one of two scenarios applies:

• The reproductive plant material concerned belongs to the plant variety that the denomination denotes; or
• The two classes of plants are internationally recognised as being distinct for the purposes of denomination.¹³

Section 37(3)(b) of the Plant Variety Rights Act 1987 states:

Every person selling material of a variety who falsely represents … that the material is material of some other variety (being a variety that is a protected variety or a variety in respect of which an application has been made) … commits an offence.

It is clear from section 17(7) and section 37(3)(b) of the Plant Variety Rights Act 1987 that it is an offence for any person to sell material of a plant variety under a protected denomination that does not denote that plant variety, unless the variety that is being sold is from a group of plants that is internationally recognised as being distinct for the purposes of denomination from the group of plants that the protected denomination denotes.

Where the following circumstances apply, the examiner should raise concerns that the mark is not registrable under section 17(1)(b) of the Act, with reference to sections 17(7) and 37(3)(b) of the Plant Variety Rights Act 1987:

• The mark consists of or contains the denomination pertaining to a plant variety in respect of which a grant has been made under the Plant Variety Rights Act 1987;
• The grant in question is still in force;¹⁴
• The trade mark application is in class 31 in respect of plants or plant material;¹⁵
• The trade mark specification is not limited only to plant material that belongs to the protected plant variety that the denomination denotes; and
• The trade mark specification covers plant material from a group of plants that is not internationally recognised as being distinct for the purposes of denomination from the group of plants that the protected denomination denotes.

The examiner should also raise concerns that the mark is not registrable under section 17(1)(a) of the Act, as the use of the mark would be likely to deceive or cause confusion.¹⁶

In response to the examiner’s concerns the applicant may request that the specification be limited to only plant material that belongs to the protected plant variety that the denomination denotes. Should the applicant agree to limit the specification in this way, however, concerns will then be raised that the mark lacks distinctive character and therefore is not registrable under section 18 of the Act.¹⁷

Alternatively, the applicant may overcome the examiner’s concerns by limiting the specification so that it covers only plant material from a group of plants that is internationally recognised as being distinct for the purposes of denomination from the group of plants that the protected denomination denotes.

The applicant applies to register as a trade mark a plant variety denomination that denotes a protected variety of rose, in respect of the specification “plants, including vegetables”. The applicant subsequently requests that the specification be limited to “pumpkins”.

Footnotes

¹³ In most cases, each genus is regarded as a separate denomination class. For example, the genus Rosa (rose) is a denomination class.

¹⁴ Where the grant in question is not still in force, the examiner should raise concerns that the mark is not registrable under section 17(1)(a) of the Act, as the use of the mark would be likely to deceive or cause confusion. See ‘Marks containing a denomination pertaining to a plant variety’, under ‘Section 17(1)(a) – Deception or Confusion’, above, for more information.

¹⁵ Plant material includes all parts of the plant, including seeds, fruits, flowers, vegetables and vegetative matter.

¹⁶ See ‘Marks containing a denomination pertaining to a plant variety’ under ‘Deception or Confusion’, above for more information.

¹⁷ 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. In light of this, where a mark consists of a plant variety denomination, and where the application is in respect of class 31 goods that encompass the plant variety in question, the examiner should raise concerns that the mark lacks distinctive character and is therefore not registrable under sections 18(1)(b), 18(1)(c) and 18(1)(d) of the Act.