Conflict Between Plant Variety Denominations And Trademarks: A Multi-Jurisdiction Comparison

Plant Variety Denomination

Plant variety denomination refers to the unique name that is given to a new plant variety. This name is used to identify and distinguish the plant variety from others.

The characteristic features of a denomination are that it must be unique, descriptive, and not misleading. For the effective management of plant breeders' rights and for ensuring that the plant variety can be easily recognized and referenced in the market, the plant variety denomination plays a very important role.

Provisions and Comparisons in Different Jurisdictions

UPOV: The UPOV Convention provides guidelines for plant variety denominations and states that a denomination must be unique and not misleading. It further states that it should not be identical or confusingly similar to existing trademarks to avoid consumer confusion and ensure clear identification of plant varieties.^[1]

Australia: In Australia, the Plant Breeder's Rights Act 1994 (Cth) governs the protection of plant varieties. Section 27 of the PBR Act of Australia refers to guidelines to name a new plant variety. ^[2]

In S27(5) the Act specifically mentions what should 'not' be a variety name:

“(5) A name (including a synonym), in respect of a plant variety must not:

…

(e) be or include a trade mark that is registered, or whose registration is being sought, under the Trade Marks Act 1995, in respect of live plants, plant cells and plant tissues.”

Further, the Trademark Manual of Practice and Procedure of Australia also mentions plant varieties:

'22.27 Trademarks that include plant varietal name'

This section stipulates that plant variety names (denominations) must be distinct and not likely to deceive or cause confusion. It further exemplifies this concept using the example of the word 'KIPFLER':

“The word KIPFLER, applied to potato chips classified in class 30. Kipfler is a common and well known variety of potato. The ordinary signification would be that the potato chips are made from Kipfler potatoes. Other traders should also be able to indicate that their potato chips are made from Kipfler potatoes.”^[3]

Europe: In Europe, the Community Plant Variety Office (CPVO) oversees the protection of plant varieties under the Community Plant Variety Rights (CPVR) system, whereas The European Union Intellectual Property Office (EUIPO) manages trademarks and ensures that trademarks do not conflict with existing plant variety denominations. ^[4]

The EU regulations explicitly state that a trademark cannot be registered if it consists of or reproduces an earlier registered plant variety denomination and vice-versa.

The “GUIDELINES On Variety Denominations Article 63 (3)(f) of Regulation 2100/94” state:

“A variety denomination shall be considered to mislead or to cause confusion if:

…

3. By dint of its similarity to a well-known trading name other than a registered trade mark or variety denomination, it suggests that the variety is another variety….”^[5]

“Article 63 (3)(a) of Regulation 2100/94” refers to the situation where a trademark is present prior to the use of a variety denomination:

“1.In the case of a trade mark as a prior right of a third party, the use of a variety denomination in the territory of the European Union shall be precluded by the objection of the trademark holder – in case it is upheld - which has been registered in one or more Member States or at EU level prior to the approval of the variety denomination, and which is identical or similar to the variety denomination and registered in relation to goods which are identical or similar to the species of the variety concerned.”^[6]

Similar provisions are also provided in other jurisdictions, including the United States and Japan.

United States: In re Pennington Seed, Inc, the U.S. Court of Appeals for the Federal Circuit also upheld the decision of the Trademark Trial and Appeal Board (TTAB) on the refusal of the trademark registration for the term "Rebel" as a trademark for a variety of grass seed. The court affirmed the decision that "Rebel" was a designation for a variety of grass seed and thus not entitled to trademark registration.^[7]

Plant Variety Protection in India

The government of India enacted “The Protection of Plant Varieties and Farmers' Rights (PPV&FR) Act, 2001" (herein after referred to as “the Act”) adopting a sui generis system so as to provide an effective system for the protection of plant varieties, the rights of farmers and plant breeders and to encourage the development of new varieties of plants. This system aims to ensure availability of high quality seeds to the farmers and food safety for the future.

The protection of plant varieties enables a breeder or developer of the variety to use that variety exclusively like any other IP right for a limited period.

On Marks Identifying Plant Variety(ies)

The following section of PPV&FR Act, 2001 mentions the definition of 'denomination':

S.2(g) “denomination” in relation to a variety or its propagating material or essentially derived variety or its propagating material, means the denomination of such variety or its propagating material or essentially derived variety or its propagating material, as the case may be expressed by means of letters or a combination of letters and figures written in any language;

In other words, a plant variety denomination can be in any language or alpha-numeric forms.

Mutual Exclusion of Plant Variety Denomination and Trademark Registration

Similar to other jurisdictions and the UPOV guidelines as discussed above, the Act reflects this exclusion in S. 17, which sets out the characteristics of variety denominations. Under S.17(4) it clearly states that a denomination registered as a variety shall not be registered as a trademark under the Trade Marks Act.

S(17) “Compulsory variety denomination”:

1. Every application shall assign a single and distinct denomination to a variety with respect to which he is seeking registration under this Act in accordance with the regulations.

2. The Authority shall, having regard to the provisions of any international convention or treaty to which India has become a party, make regulations governing the assignment of denomination to a variety.

3. Where the denomination assigned to the variety does not satisfy the requirements specified in the regulations, the Registrar may require the applicant to propose another denomination within such time as may be specified by such regulations.

4. Notwithstanding anything contained in the Trade Marks Act, 1999 (47 of 1999), a denomination assigned to a variety shall not be registered as a trade mark under that Act.

· Thus, a trademark once registered cannot be used as a denomination for a plant variety and vice-versa. The reasons for this are: Both plant variety denominations and trademarks must be distinct so as to avoid confusion among consumers and stake holders.

· Since a plant variety denomination is the name of a variety and anybody using the variety must call it by that name even when the variety right has expired, a registered trademark may pose challenges to the use of such denomination, hence it is important that they are distinct from each other.

Bridging the Gap

Though a mechanism is available in most countries to avoid this conflict, In India, there still appears to be a void on a practical front. The Trade Marks Act of India does not address this issue, nor are there any FAQs or a Manual from the Plant Variety Authority of India that raise awareness on this subject. Additionally, the absence of any legal precedent in India on this subject further blurs the boundaries. The lack of clarity and integration between the plant variety and trademark systems in India has even led to instances where a variety denomination and trademark are either the same or similar. This situation not only creates potential legal disputes but also undermines the distinctiveness and branding of both plant varieties and commercial products. Companies and breeders may find themselves in contentious positions, risking their intellectual property rights and the integrity of their brands.

Thus, there is a need for collaboration between plant variety authorities and the trademark registry in India to bridge this gap. It is clear from the above comparative analysis that both regimes should complement each other. Consequently, India should consider amending the Trade Marks Act to explicitly include a ground for refusing a trademark application if it corresponds with a variety denomination. Alternatively, issuing comprehensive guidelines on this matter could help clarify the relationship between trademarks and variety denominations, ensuring a more cohesive regulatory framework.

Finally, it is also essential to establish a mechanism of standard guidelines on how to address a situation in which a foreign/new variety is being registered in a country with a denomination for which a prior trademark may already exist. This framework should aim to provide clear procedures for evaluating potential conflicts and ensuring that the rights of trademark holders are respected while allowing for the introduction of new varieties.

Udit Malik is an Advocate & Patent Agent . Siddharth Praveen Acharya is an AOR at Supreme Court. Views are personal.