HG Intellectual Property & Agribusiness Alert: Is it a bird, is it a plane, or is it a trade mark? - 19 March 2015

What’s your favourite apple?

Do you like:

  • Royal Gala;
  • Granny Smith;
  • Pink Lady;
  • Fuji; or
  • Red Delicious?

Would you be surprised if we told you that one of these is not actually a variety of apple at all? One of these is a trade mark! Which one do you think it is?

In this Alert, Partner Hayden Delaney and Associate Hayley Tarr address the some of the issues associated with trade mark registration as it applies to plant varieties.

Key Issues:

  • Remember to use your trade mark as a trade mark in order to acquire and maintain distinctiveness.
  • Where a straightforward trade mark registration proves difficult, think outside the box for clever ways to protect your brand (even if by default).

The answer is PINK LADY

Many consumers - including the author, in times gone past - believe that they are buying a particular variety of apple, called a Pink Lady apple, but they are not.  Pink Lady apples are not a variety of apple at all.

PINK LADY is a trade mark, and a large number of different varieties of apple are sold under that trade mark, including recent new additions Barnsby, Maslin, Rosy Glow, Ruby Pink and Lady-In-Red.

The company that would claim ownership of the mark does not have a monopoly over it yet, though.   

At best, it can claim a monopoly over the linked composite versions of the mark:

  • Australian trade mark 1409743 for apples and apple trees; and
  • Australian trade mark 1580181 for fresh fruit

But repeated attempts to register the mark as a plain word mark, and thus obtain exclusive rights to use of the mark PINK LADY per se have not succeeded (at least in relation to apples).  The Trade Marks Office still views PINK LADY as descriptive.  

If consumers don’t even know that PINK LADY is a trade mark and not a variety name, then is it being used “as a trade mark” or as a descriptor?

It is important that traders make it very clear that they are using a trade mark as a trade mark, by accompanying that trade mark with a product descriptor, such as PINK LADY Cripps Pink apples. (Cripps Pink is the most common variety of apple sold under the PINK LADY trade mark.)  If this is not done:

  • there cannot be trade mark use in order to establish that a mark has acquired distinctiveness through use;
  • there is no ongoing use to protect a registration for a trade mark becoming vulnerable to removal for non-use;
  • the trade mark itself may be taken to be the descriptor (i.e. so commonly used to refer to what consumers understand to be a variety of apple, that it becomes the generic word for that variety (or, in reality, bundle of varieties) of apple and no longer functions as a trade mark); and
  • there is a risk that a reference to a number of different varieties using the one trade mark may be misleading, as consumers might believe that they are buying one variety of fruit called the Pink Lady variety, but in reality they are buying a piece of fruit that could be from any one of 5 or more different varieties.

One would think this would deter brand owners from using their trade marks in a way that is ambiguous.  In reality, however, there is a strong driving force for brand owners to make consumers believe that the trade mark indeed refers to a variety.  When it comes to fruit and vegetables, consumers are more likely to be loyal to a particular variety of apple they like, as opposed to one brand or another of that apple.  Brand names, traditionally, do not come into play as much with non-processed food items.

An innovative solution

So, how do traders achieve this objective, whilst also doing their utmost to protect their trade mark (which is insufficiently distinctive to be registered for the variety (or bundle of varieties) of fruit or vegetable actually sold under that trade mark)?

They register the mark for other fruits or vegetables!

PINK LADY is registered as a plain word mark in Australia under Australian trade mark registration number 1280838 for “Fruits, plant material and trees; all being of the genera: Citrus, Prunus, Pyrus or Vitis” in class 31 in the name of Apple and Pear Australia Limited.

  • The Citrus genus encompasses lemons and limes etc.
  • The Prunus genus encompasses stone fruits such as apricots, cherries, peaches and plums.
  • The Pyrus genus encompasses pears.
  • The Vitis genus encompasses grapes.

Apples, on the other hand, are in the Malus genus.  This genus is notably not covered by the registration.

That is, PINK LADY is not registered for apples. But the registration for closely related fruits might:

  • scare off laypersons who do not know that apples are not included in the genus’ listed in the specification of goods, and
  • grant the registered owner protection for apples by default, as trade mark infringement occurs when third parties use a registered trade mark in relation to goods and services that are “closely related” to the goods and services of the registered trade mark.

The clear message for farmers is to think outside the box. How can you market and brand your fruits and vegetables to maximum consumer appeal? If you do this, we, as your trade mark attorneys and intellectual property lawyers, will work with you to assist you in maximising your protection.

While the farmers and legal advisors work towards these ends, everyone else is left to wonder: how often is this happening?  How many other things did you think were varieties, but are actually trade marks?

For more information or discussion, contact the HopgoodGanim Intellectual Property team. 

HopgoodGanim is a legal firm of trusted experts. Founded 40 years ago, the HopgoodGanim of today remains fiercely independent and proud of our sustained growth and ongoing success. We deliver exceptional commercially-focused legal advice to clients throughout Australia and internationally and in addition to our corporate and commercial teams, we also house one of Australia’s most highly regarded family law practices.