Federal Court: grass varietal name not capable of distinguishing applicant's goods


In Buchanan Turf Supplies Pty Ltd v Registrar of Trademarks ([2015] FCA 756, July 24 2015), the Federal Court of Australia has dismissed a claim for registration as a trademark of a grass varietal name, despite extensive use by the applicant.

In 1995 Buchanan Turf Supplies Pty Ltd developed a new variety of buffalo grass. They applied for protection for that grass under the Plant Breeder’s Rights Act 1994 on September 20 1996. Provisional protection was granted on November 1 1996 and a Plant Breeders Right was granted on 27 March 1998. In its application, the variety of grass was identified by the name Sir Walter.

Section 53(1)(c) of the Plant Breeder’s Rights Act prohibits third parties from using the name of a registered plant variety in relation to any other plant varieties of the same plant class, and Section 27 sets out a number of naming restrictions for plant varieties.

Under the Trademarks Act 1995, registration may be obtained if the mark applied for is inherently capable of distinguishing. If the trademark “is not to any extent inherently adapted to distinguish”, it can still be registered if it is established that, because of the extent to which the applicant has used the trademark before the filing date of the application, it does distinguish the goods or services of the applicant.

The application for registration of SIR WALTER was filed on July 26 2012, and evidence showing extensive use of that name since about 1997 in text form, and in conjunction with a knight device, was filed in support of a claim that the mark SIR WALTER is factually distinctive.

Despite extensive use in television, radio, online and print advertising, the court concluded that the mark SIR WALTER does not and could not function as a trademark. This is because it describes the applicant’s goods, rather than distinguishes them.

The court took the view that the evidence showed, overwhelmingly, that the name Sir Walter was used to identify a particular type of grass. Therefore, it was not being used for the purposes of distinguishing the applicant’s grass from similar goods sold by other traders.

While there had been use of the name Sir Walter in conjunction with a knight device, which might give an impression of trademark use, the court took the view that even then the name Sir Walter was describing the type of grass rather than distinguishing the applicant’s product. While the combination of elements might be considered a trademark, that did not render use of the name Sir Walter use for the purposes of distinguishing the applicant’s grass.

The essential purpose of specifying the varietal name, when seeking protection under the Plant Breeder’s Right Act, is to enable that name to be used for identifying the new variety. Having secured such protection, the rights holder is free to use the name for that purpose without direct competition. However, while the name may become associated with a product of a particular business, as the name is essentially descriptive, once the holder’s entitlements under the Plant Breeder’s Right Act expire, the name is free for others to use descriptively.

The applicant had also made use of the name Sir Walter in relation to certain lawn-related products, including fertiliser, weed and pesticide products. While that use was not considered to be of significance, the court took the view that the name SIR WALTER is sufficiently distinctive to be accepted in respect of goods other than those in Class 31 (“turf grass”).

As a consequence, the application has now been accepted in respect of “chemicals used in agriculture” in Class 1, “weeding and binding compositions” in Class 4, “herbicides” in Class 5, “agricultural implements other than hand operated” in Class7, “hand tools and implements used in agricultural” in Class 8, “clothing” in Class 25, “installation services” in Class 37, “design and development of computer hardware and software” in Class 42 and “agricultural services” in Class 44.

Notwithstanding any future registration in respect of those goods and services, following the court’s decision, it is clear that any use of SIR WALTER to refer to lawn turf of the specified variety will be descriptive use. Therefore, even if that use is in connection with goods or services for which Buchanan Turf secures registration, any genuine descriptive use will not infringe that registration.

The present case is another example of the usual lesson that, when a business creates a new product, they should create a generic name and a distinctive trademark. In that way, third parties will have a generic name that they can use, and the distinctive trademark can be used and protected indefinitely by the product originator. By using the device of a knight on horseback, the applicant in the present case has some distinctive indicia that identifies its business; however, its position would have been much stronger if it also had a distinctive word mark that was exclusively associated with its products.

Sean McManis, Shelston IP, Sydney

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