IPA trademark part-32a.2-introduction-to-examining-trade-mark-applications-relating-to-plants-and-plant-materials — IP Australia Trade Marks Manual of Practice and Procedure – Part 32A.2 Introduction to examining trade mark applications relating to plants and plant materials

32A.2.1 Overview This chapter provides supplementary information relevant to examining trade mark applications that concern plants or plant material and should be read alongside other chapters outlining the applicable principles and tests for ss 41, 42(b), 43, and 44 of the Trade Marks Act 1995 (Cth). 32A.2.2 Things to be aware of when examining an application containing plants or plant materials Plants and plant materials are typically claimed in Class 31; however, some claims may be classified in other classes. Plant material includes all parts of the plant, including fruit, flowers, seeds, vegetative cuttings and other live plant tissues.  Animal foodstuffs, litter, mulch and other similar claims must also be considered against the PBR Act, as these claims include propagating or harvested plant material. Plant nomenclature, and particularly the concept of variety/cultivar/synonym (whether on the PBR Register or unregistered use in the marketplace), are relevant for the purposes of examining the trade mark under s 41 and s 43 in relation to specifications covering plants and plant material. 32A.2.3 The Plant Breeder’s Rights Act 1994 The PBR Act governs the granting of proprietary rights to breeders of new varieties of plants and fungi, protecting the names of plant varieties and their synonyms.  The Act sets out the scope of protection afforded to various material, including propagating material (section 11), and in other circumstances, harvested material (section 14) and products obtained from harvested material (section 15). 32A.2.4 The Register of Plant Varieties The Register of Plant Varieties provide a database that records changes in the details and status of applications. The Register of Plant Varieties contains the follow statuses for PBR rights: PBR Status Meaning Equivalent TM Status Accepted An application for PBR has been received, assessed as having met the provisional requirements of section 30(2) of the PBR Act, and accepted. Varieties with the status of accepted are usually provisionally protected under PBR. Pending Refused The variety does not meet the requirements of section 30 (2) of the PBR Act. The variety is not protected under PBR. No equivalent - the closest is Minimum Fling Requirement Rejected The variety does not meet the requirements of section 30 (2) of the PBR Act. The variety is not protected under PBR. Refused Granted The variety has been granted PBR under section 44 of the PBR Act. The variety is protected under full PBR. Registered/Protected Withdrawn The variety has been withdrawn under sections 33 or 34 of the PBR Act. The variety is no longer under provisional protection from the date of the withdrawal. In rare cases, and if the variety has not commercialised or only recently so, a second application may be made for the same variety. Consequently, before initiating any significant action, propagators and sellers are advised to check with the applicant to ensure that the variety is ineligible for PBR should a fresh application be lodged. Withdrawn/Lapsed Terminated The variety is either voluntarily surrendered under section 52 or revoked under section 50 of the PBR Act. The variety is no longer under protection from the date of the termination. Withdrawn (after registration) Removed Not Renewed Expired The maximum term of PBR has run out and the variety is no longer protected from the date of expiry. No equivalent - the closest is ‘Removed not Renewed’ 32A.2.5 Glossary of terms used in this chapter Throughout this chapter, reference will be made to specific plant variety terminology. The following is a breakdown of some of the most common terminology used: Genus (pl. genera) A taxonomic grouping of similar species. Similar genera are grouped into families. Species The basic category of biological classification, intended to designate a single kind of plant, any variations existing among the individuals being regarded as not affecting their essential sameness. Similar species are grouped into genera. Variety A category within a species. May refer to either a naturally occurring subspecies (which is indicated by the use of “var.” before the name, or to a cultivated variety (cultivar). Synonym An official name that is included in a PBR application in addition to the name of the variety and is a name by which the variety will be known or sold in Australia. Alternate name An unofficial synonym. Trade Designation A name that has been used for marketing a plant variety in place of its official name. Trade name A name associated with a plant variety for marketing purposes. Trade reference A name which can be nominated in a PBR application, indicating a name to be used for marketing the variety, but is not an official name covered by the PBR registration. Propagating material Any part or product from which, whether alone or in combination with other parts or products of that plant, another plant with the same essential characteristics can be produced. 32.A.2.6 Plant taxonomy hierarchy Taxonomic Hierarchy Examples: Two Types of Banksia Kingdom Plantae Division (aka Phylum) Magnoliophyta Class Magnoliopsida Order Proteales Family Proteaceae Genus Banksia Species ericifolia x spinulosa integrifolia (hybrid) Subspecies (var.) N/A var. integrifolia Cultivar or variety ‘Giant Candles’ N/A