IPA trademark part-32a.5-information-relevant-to-s-43-considerations-in-relation-to-claiming-plants-or-plants-materials — IP Australia Trade Marks Manual of Practice and Procedure – Part 32A.5 Information relevant to s 43 considerations in relation to claiming plants or plants materials

The subpart should be used in conjunction with Part 29 Section 43 – Trade Marks Likely to Deceive or Cause Confusion to assess whether a ground for rejection must be raised under s 43 of the Trade Marks Act 1995 (Cth) for an application that relates to plants or plant materials. The information below provides information to help determine whether an application in relation to plants and plant related materials creates a connotation that is likely to deceive or cause confusion. 32A.5.1 Considerations for applications containing plant materials that may be deceptive or confusing It is important to assess whether a connotation arises from the mark and if so whether that connotation would be likely to deceive or cause confusion if used in relation to the goods (and services) that have been claimed. For example, a trade mark may be likely to deceive or cause confusion if it connotes a particular plant or variety, and the goods that have been claimed do not correspond with that connotation: Trade Mark and Claim S 43 ground for rejection Rationale Poppy Class 31: Chia seeds Yes The trade mark, being the word poppy, in conjunction with the similar appearance of poppy and chia seeds and that both goods can be purchased in the same supermarket aisles, creates a misleading connotation that the goods are poppy seeds when used in relation to chia seeds. As such a ground for rejection must be raised. If, however, the trade mark is unlikely to create a connotation, or the connotation is not likely to deceive or cause confusion, then there will be no ground for rejection: Trade Mark and Claim S 43 ground for rejection Rationale Poppy Class 31: sugarcane seeds No The goods in this case are unique seeds that have no resemblance to poppy seeds (see above) and are of sufficiently different varieties (poppy seeds being Eudicots and sugarcane seeds being Monocots). Given this lack of resemblance, it is unlikely that any connotation arises, and even if one did, it would be unlikely to deceive or cause confusion in this instance. 32A.5.2 Potential amendments and limitations to address deceptive or confusing connotations In some instances, an amendment or limitation may be sufficient to address connotations such that use of the subject trade marks are no longer likely to deceive or cause confusion, however, any such amendment or limitation must account for all such connotations , including use of the sign in relation to other plants and plant material which may resemble what is connoted.