2014 CIOPORA Chronicle

a mark containing wording for
live plants, agricultural seeds, fresh
fruits, fresh vegetables or equivalent
wordings, the examiner must
ensure that the term making up the
trademark does not coincide with
the name of a specific plant variety.
In order to verify this, the examiner
will first check the CPVO register
to ascertain if the trademark applied
for happens to coincide with a
plant variety name already entered
in the mentioned register. If the
check shows an identical entry in
the register, the examiner must raise
an objection since plant variety
names entered in the register are
considered to be descriptive and
cannot be monopolised.”
The rules even go on to state:
“Lastly, it should be noted than an
objection should be raised not only
in respect of applied for trademarks
that are identical to (or are slight
variations of) a plant variety name
that appears in the mentioned
CPVO register or is used in trade as
the generic name of a plant variety,
but also in respect of any good and/
or service which can be directly
linked to the plant variety name in
question.”
Or, in short, no Community trademarks
for variety denominations
of a registered Community PVR
should be granted to plants or related
products. The approach seems
reasonable. After all, each variety
must have one free name so that
it can be referred to by everybody
after the PVR has lapsed. And for
everyone who tried to obtain a
US-trademark in class 31, the
situation is familiar. The USPTO
does not accept trademark applications
covering terms that have
already been used as varietal names.
What seemed irritating, however,
is that under the guidelines only
denominations of registered Community
PVR were immediately
considered generic. One might ask
why a distinction should be made
between denominations of varieties
protected on a European PVR and
those ‘only’ covered by national
PVR; not even to mention old varieties
or varieties with lapsed PVR
titles. But OHIM’s revised manual
tried to address this issue as follows:
“Whenever a CTM application
consists of wordings for live plants,
agricultural seeds, fresh fruits, fresh
vegetables or equivalent ones, the
examiner will have to verify, by
means of internet research, whether
the term making up the applied
for trademark coincides with the
name of a specific plant variety
that happens to be already used in
trade”. Admittedly, the outcome of
such research and its interpretation
seems rather unpredictable.
An ‘unlawful
administrative practice’?
Actually, the OHIM decision in
the DISCUS case and the revised
manual for examination seem to
run somewhat contrary to the
European trademark laws in force.
Neither the CTMR nor the current
Trademark Directive mention
plant varieties or their denominations
with a single word. In fact,
variety denominations, according
to the law, can only be excluded
from trademark protection as ‘other
intellectual property rights’. 4 This is
the case for example in Germany.
Under § 13(2)(4) of the German
Trademark Act, the holder of a
PVR title has to bring a court action
5 for the cancellation of a trademark.
A variety denomination is
neither seen as an absolute ground
for refusal nor does it give a right to
oppose a trademark application.
More confusion
underway
To sum up: the future relating to
this issue does not look promising.
While the proposal for a revised
CTMR does declare variety
denominations of registered Community
PVR as absolute grounds
for refusal of a trademark application,
the proposal for a Trademark
Directive remains entirely silent
about variety denominations.
If the revised rules entered into
force unaltered, the confusion
would be complete: denominations
of varieties protected as
Community PVRs will be an
immediate obstacle to Community
trademarks. Whether the examiner
remains obliged to also search for
other customary denominations
is uncertain but not likely. To my
mind, the legislator would be well
advised to consider at least the demand
of the International Chamber of Commerce
6 and to also include denominations
of national PVRs in the CTMR.
Whether the trademark practice in
the individual EU member states will
change is even less foreseeable. As no
harmonisation is intended, one may
only guess how variety denominations
of any kind are going to be dealt with
by the national trademark offices in
the future.
Conclusions
Speaking solely about varietal names,
the envisaged revision of the EU
trademark system is highly detrimental
to legal certainty and, consequently,
to the interests of breeders and other
trademark holders alike. One simple
solution to prevent name collisions,
already adopted by many breeders,
is the use of coded denominations.
A trademark ‘12345PVR’ covering
‘roses’ might at some stage be applied
for, but such cases seem less likely. In
any event, anybody filing a national or
Community trademark application
in class 31 will face a great deal of
uncertainty once the proposals have
been adopted. |||
1. Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL amending Council Regulation (EC) No 207/2009 on the Community
trademark; COM/2013/0161 final - 2013/0088 (COD)
2. Proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL to approximate the laws of the Member States relating to trademarks;
COM/2013/0162 final - 2013/0089 (COD)
3. The Community PVR system, for example, covers variety constitutes, i.e. plant
material capable of producing plants of the protected variety, while trademarks
are granted for names, logos, sounds, colours, shapes and the like.
4. Within the meaning of Article 4 of the Trademark Directive and Art. 53(2)(b) CTMR.
5. If the trademark holder refuses to withdraw the registration upon a respective
motion before the trademark office.
6. Expressed in their Comments on the European Commission Proposals for Reform
of the EU Trademark System of 1 July 2013.
About the author
Thomas Leidereiter is dealing with Intellectual Property in general and
Plant Variety Rights (“PVR”) matters in particular. After 14 years at a major
German law firm, Thomas Leidereiter recently founded his own firm, Green
Rights, in Hamburg. With an IP background covering trademarks, designs,
copyrights and the law on unfair competition, he is advising clients on
all aspects of protection of plant innovations, including IP licensing and
enforcement. Thomas has been involved in major court cases dealing with
fundamental PVR issues in the ornamental sector as well as questions
of PVR infringements. He is a member of the Expert Committee on the
Protection of Plant Innovations at GRUR, a member of CIOPORA, its
lawyers’ panel, and of CIOPORA Germany.
CIOPORA Chronicle June 2014 | www.FloraCulture.eu 37