Trademarks and Variety Denominations are two different concepts that should not be confused

For some, Avalanche +® (variety ‘Lexani’ is just one of the many white roses. For others, it represents one of the best roses for the high-end market.

When buying a Pink Lady®, Kanzi® or Jazz™ apple in the supermarket, few consumers will know they are purchasing a ‘Cripps Pink’, ‘Nicoter’ or ‘Scifresh’ apple variety. The fruit industry, particularly the market segment of apples, uses end-consumer brands to identify specific varieties. Narrowing it down to flowers, when buying a luxurious, heavily petalled rose in pure white and with a hint of moss green in the outer petals, flower connoisseurs know they are buying an Avalanche+® (variety ‘Lexani’), but for most of us, it will just be a white rose.

While branded products are increasingly present on the retail shelf, these products represent mostly grower brands or brands to market a specific product range.

Trademarks to identify specific flower varieties are predominantly used by breeders for marketing aimed at the professional supply chain, including growers.

When buying a Pink Lady®, Kanzi® or Jazz™ apple in the supermarket, few consumers will know they are purchasing a ‘Cripps Pink’, ‘Nicoter’ or ‘Scifresh’ apple variety.

TRADEMARK OR VARIETY DENOMINATION?

A trademark is a sign used in trade to identify the origin of goods and services. It will help differentiate your products from the competitors. A trademark owner is free to use a single trademark, either for one variety or for multiple products (or plant varieties), within the class linked to that trademark. Class 31 of the Nice Classification (living plants) is the most relevant for plant varieties.

Variety denomination is the generic designation of a specific plant variety, meaning that each variety has its own denomination by which it can be identified.

HOW TO USE A VARIETY DENOMINATION

Using the same denomination for several varieties within the same species is not allowed. Such a denomination must be chosen when applying for a plant breeders’ right (PBR). When a variety is protected by a PBR, the UPOV Convention stipulates that the use of variety denomination is obligatory when commercialising propagating material of the variety at stake.

In the EU, this obligation applies to the marketing of variety constituents, which covers entire plants or parts of plants as far as such parts are capable of producing entire plants. The floriculture industry has several commercial registration systems, such as Plantscope available in Dutch, English, and German, to facilitate variety identification. Green professionals use it when marketing finished products such as potted plants and fresh-cut flowers.

Unlike trademarks, variety denominations are generic and should be able to be used by everyone. This means that you cannot apply for a trademark in Class 31 for a name that encompasses the species for which that same name is already used as a denomination, as being generic is an absolute ground for refusal of a trademark.

A solution can be to specify in the trademark registration that this applies to all living plants except for the species in which the variety denomination is or are in use.

VARIETY DENOMINATIONS ALREADY USED AS TRADEMARKS

The other way around, if you apply for a PBR and propose a variety denomination that another party already protects as a trademark, the CPVO will give a warning but leaves it up to the applicant to consider whether this trademark will indeed jeopardise the use of the denomination.

This is because the validity of a trademark depends on different factors, such as the actual use of the trademark. If there is a valid trademark, then a trademark holder will be able to forbid the PBR holder the use of his variety denomination. Therefore, the applicant can try to come to a settlement with the trademark holder. This should be done in time so it will be possible to choose an alternative denomination in case a settlement hasn’t been reached. If successful, please note that this will not be with the affect of exercising this trademark against third parties that want to use the variety denomination, as it still is the generic name of the variety.

INFRINGEMENT

So, you cannot use the same name for a trademark and for a variety denomination. However, if you want to strengthen the IP protection of your plant variety, you can use a trademark with a different name next to the variety denomination. One of the significant advantages of a trademark, next to its commercial value, is that it is easier to use as a basis for an infringement case due to its recognisability. Providing evidence for PBR infringement is often more challenging.

Nonetheless, whosoever omits the correct use of a variety denomination may be sued by the PBR holder on the grounds of infringement.
Regarding trademarks, it is the other way around, where someone is not allowed to use your (registered) trademark without your permission. Furthermore, when using a trademark next to a variety denomination, it is important to use both next to one another consequently in order to avoid the trademark being perceived as the variety denomination and would still become the generic designation. Beware that this is also required when a code is used as denomination instead of a fancy name.

WHICH SYMBOLS TO USE?

For trademarks, the well-known Trademark ™ and Registered ® symbols exist. The first is usually used for unregistered trademarks; using this symbol does not guarantee that the mark is or will be protected under trademark laws.

Contrarily, it is not mandatory to use this ® symbol. However, it is important to note that in many jurisdictions, this symbol ® can only be used if a trademark has indeed been registered. In fact, it is even considered a civil or criminal offence (depending on the jurisdiction) if this is not the case. So, if you have applied for a trademark which is not yet registered, you are not allowed to use this symbol.

In most territories, however, the use of the ™ or ® symbol is not sanctioned, and they can be used regardless of whether an application for registration has been filed or registered. Any such use may, however, be considered misleading, which may lead to a sanction after all.

Variety denominations, on the other hand, do not have an internationally recognised symbol you can use and put next to that name to inform customers the variety is protected. Instead, based on the variety denomination, interested parties should themselves search the relevant databases to find out the protection status. The use of single quotation marks can recognise the variety denomination. For example, ‘Cripps Pink’.

This article was first published in the November 2023 issue of FloraCulture International. It is authored by Judith de Roos, Charlotte Plasman, David Krantz, and Isolde Borghans from AOMB intellectual property. The firm has both trademark and PBR experts who are available to assist you in any trademark or PBR-related matters. Their knowledge can help you navigate the complexities of IP, which, in the case of plant identification, can be either interfering or complementary.

AOMB intellectual property
Veraartlaan 4
2288 GM Rijswijk
Netherlands
j.deroos@aomb.nl