Take Care when Cutting the Grass


The Federal Court recently issued a decision regarding the registrability of the trade mark SIR WALTER for “turf grass” in Class 31, where the applied for trade mark was already the subject of a registered plant breeder’s right (PBR) in Australia.

In 1996 Buchanan Turf Supplies Pty Ltd (“Buchanan”) registered a PBR for a variety of buffalo grass. The official name of this grass variety is “Sir Walter”. The “Sir Walter” variety of buffalo grass has since been widely distributed and sold by Buchanan or its authorised growers/representatives.

In 2012 Buchanan applied to register SIR WALTER as a trade mark in relation to a variety of goods, including “turf grass” in Class 31. At examination, it was found that the trade mark SIR WALTER had no inherent capacity to distinguish “turf grass” in Class 31. Evidence of use was filed but the Examiner’s objection was maintained, and subsequently upheld at a hearing before the Trade Marks Office. The matter was then appealed to the Federal Court.

The Federal Court held that:

  • “Sir Walter” is the name of a registered PBR for the very thing (buffalo grass) for which trade mark registration is sought – it is the ordinary commercial name for that variety of buffalo grass. Therefore, the applied for trade mark SIR WALTER is not to any extent inherently adapted to distinguish “turf grass” in Class 31.
  • Buchanan filed evidence of use to try and show that the trade mark SIR WALTER had, through use, become recognised as a trade mark denoting Buchanan’s goods exclusively. However, the Court held that the evidence showed that the term SIR WALTER was in fact used to refer to the “Sir Walter” variety of buffalo grass generally, and not to distinguish Buchanan’s “Sir Walter” grass from the “Sir Walter” grass provided by other traders.

The Court went on to distinguish this from its 2014 decision regarding registration of the trade mark ZIMA for tomatoes (Mastronardi Product Ltd v Register of Trade Marks (2014) 318 ALR 249). Unlike the present matter, the ZIMA trade mark was not the name of a particular plant variety, nor was it the subject of a PBR registration. Rather, ZIMA was a term coined by the applicant, for the purpose of distinguishing its golden grape tomatoes from those sold by other traders.

It is clear, therefore, that in Australia if a name is registered as a PBR to denote a particular plant variety, it cannot subsequently be registered as a trade mark. Likewise, the Plant Breeder’s Rights Act 1994 prohibits registration of a trade mark as a PBR. Therefore, when launching a new plant product for sale it is important to select and register both a plant variety name and a trade mark.

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