The chaos has arrived

Posted On 17 Nov 2016
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leiderieter-logoby Thomas Leidereiter

HAMBURG, Germany: In the 2014 CIOPORA Chronicle published by FloraCulture International, the author predicted: “… the envisaged revision of the EU trade mark system is highly detrimental to legal certainty and, consequently, to the interests of breeders and other trade mark holders alike”. It seems that this prediction has become reality, since the wording of the European Union Trade Mark Regulation (EUTMR) and, in particular, the current practice of the European Union Intellectual Property Office (EUIPO) makes it almost impossible to predict the outcome of a European Union trade mark (EUTM) application covering a broader range of species or even genera of plants.

With good reason, most breeders do not only assign one name to their newly-bred varieties but two. First, a variety denomination (VD) for the variety is chosen. According to Article 20(1)(a) UPOV 1991 “the variety shall be designated by a denomination which will be its generic designation”. In consequence, the VD is linked to the variety in question and eventually free for anyone to use once the plant variety right (PVR) for the variety has lapsed. Secondly, an increasing amount of breeding companies utilize trademarks to further protect the results of their breeding efforts. Such trademarks might be an individual product brand for the variety in question, a family brand covering a broader range of related products (e.g. the Calibrachoa range of a company) or an umbrella brand covering a whole range of products for a common purpose, e.g. for a company’s bed & balcony plants portfolio. Since trademarks can be prolonged for an indefinite period of time, and as they are not linked to an individual variety, the advantage of the combination of the two IP systems is obvious.

Trademarks and VD – the legal situation before March 23, 2016

In the past, Article 7(1)(c) CTMRR was the most relevant provision for the examination of Community Trade Mark (CTMR) application, which referred to live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent terms. According to said article, trademarks which consist “exclusively of signs or indications which may serve, in trade, to designate the kind” were not to be registered. CTMR applications consisting of an earlier VD were also considered to be “devoid of any distinctive character” (Art. 7(1)(b) CTMR) and sometime also to be “contrary to public policy” (Art. 7(1)(g) CTMR in connection with Art. 20(1)(a) UPOV 1991). The aforesaid provisions are still in force today under the EUTMR and, thus, relevant with regard to denominations of non-registered plant varieties and also applicable to trade marks that have been registered before March 23, 2016. However, since Art. 7(1)(c) CTMR only covers trademarks which consist exclusively of an earlier VD, their scope of application is rather clearly defined.

Trademarks and VD – the new Art. 7 (1) (m) EUTMR

With the European trademark reform Article 7 (1) (m) EUTMR was introduced. Today, also the following shall not be registered: “trademarks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or national law, or international agreements to which the Union or the Member State concerned is a party, providing for protection of plant variety rights, and which are in respect of plant varieties of the same or closely related species”. What are the changes, the new paragraph brings? 

  1. Trademarks that consist of an earlier VD 

Under the new Article 7(1)(m) EUTMR, trademarks which consist of an earlier VD that is registered as a Community Plant Variety Right (CPVR) or nationally shall not be registered if the application covers plant varieties of the same or closely related species; this is simple. In addition, the EUIPO decided that Article 7(1)(m) EUTMR also refers to VDs of varieties that have been, but are no longer, registered. According to section 2.13.3.2 of the Guidelines for Examinations of European Trademarks, “Article 7(1)(m) EUTMR applies only in respect of plant variety denomi-nations that were registered […] or had expired or been surrendered or terminated at the time when the EUTM application was examined”; simple again.

  1. Trademarks that reproduce in their essential elements an earlier VD 

The actually problem results from the second alternative of Article 7(1)(m) EUTMR, pursuant to which trademarks that “reproduce in their essential elements” are affected by an earlier VD. The concept of “essential elements” of a trade mark is new to the European trademark regime, and the definition of the concept is anything but clear.

  1. Examples 

According to the Guidelines, under Art. 7(1)(m) EUTMR the following situations may arise:

  1. a) The EUTM applied for consists of an earlier plant variety denomination, for example the word mark ‘ANTONIO’ for fruits and vegetables. Since ‘ANTONIO’ is an earlier plant variety denomination for peppers, the Office will object with regard to peppers.

 

  1. b) The EUTM contains an earlier plant variety denomination. Whether the application is objectionable or not will require a more detailed assessment. In particular, the Office will examine whether the plant variety denomination is one of the essential elements of the EUTM application. Accordingly, the trademark application “ANTONIO MARIN VEGETABLES” for “fruits and vegetables” would be refused. On the other hand, the trade mark could be registered for “fruits and vegetables” since ANTONIO is not considered to be an essential element of the trade mark according to the guidelines.

Even more puzzling and is the following rule provided for in the Guidelines:

“… when more than one plant variety denomination appear as an essential element in a trademark application, for example a plant variety denomination for ‘apples’ and another one for ‘strawberries’, the list of goods will have to be limited in order to exclude the goods covered by each plant variety denomination, that is to say, apples and strawberries. This also applies where the two plant variety denominations are joined in the same term, for example MARINEGOLD, where both MARINE and GOLD are protected; the list of goods will have to be limited in order to exclude the goods covered by each plant variety denomination”.

Various EUTM applications covering “natural plants” have already been objected to by the EUIPO, e.g. “Ice N’ Roses” or “Summer of Love” since “Ice”, “Rose”, “Summer”, and “Love” are registered VDs for different species. 

  1. The consequences

With regard to a product brand, i.e. a trademark that shall serve to designate only an individual variety of a company, the consequences are limited. The list of goods can be narrowed down to the species of the variety in question and, thereby, most other species are excluded as possible sources for conflicting VDs.

If, however, the trademark shall function as an umbrella brand and, thus, needs to cover goods such as “ornamental plants”, “fruits”, “vegetables” or the like, the problem is obvious. Suddenly, all kinds of variety denominations become relevant even if the denomination in question is only one part of the trademark elements – as shown best by the example of “ANTONIO MARIN VEGETABLES”. Although ANTONIO is only one element of the application, the EUIPO would not allow an unlimited trade mark because of the earlier VD “ANTONIO”.

And finally, how would the EUIPO handle a EUTM application “RICE” covering “natural plants and flowers”? The term “RICE” is not a registered VD according to the CPVO Variety Finder. However, “ICE” is a VD for varieties of Oryza sativa L. and Medinilla Gaudich. Since “RICE” does contain in its essential elements the term “ICE”, would the application have to be opposed to and eventually limited?

Conclusions

First of all, it seems that the end of “speaking denominations” has arrived, since such VDs will inevitably block countless trademarks literally forever. Once registered on the UPOV level, the VD can no longer be used as – and, more importantly, as an essential element of – a trademark, even if the PVR has lapsed. Any investments in such a name are in vain. Thus, only coded VD should be used in the future. Most importantly, all breeder associations should quickly react and advocate a revision of Art. 7(1)(m) EUTMR. The phrase “or reproduce in their essential ele-ments” needs to be eliminated from the current provision as its scope seems almost indefinite. In any event, choosing the right trade mark in the plant sector has become a challenging task.

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