Inherent adaptation
44 In my assessment, the sign SIR WALTER is not to any extent inherently adapted to distinguish the designated goods as the appellant's goods.
45 The matter can be assessed by adapting Kitto J's question in Clark Equipment to the facts of the present case: Would traders of buffalo grass of the Sir Walter variety, in the exercise of the common right of the public to make honest use of words for the sake of the signification which they ordinarily possess, think of the sign SIR WALTER and want to use it in connection with the designated goods?
46 The answer to that question is, undoubtedly, "yes". Sir Walter is the name of the plant variety that constitutes the very thing - "Buffalo grass of the 'Sir Walter' variety (as lodged with the Registrar of Plant Breeder's Rights (ref: certificate no. 1028), being part of the genus Stenotaphrum and a member of the species Secundatum" - for which trade mark registration is sought.
47 As such, SIR WALTER denotes the Sir Walter plant variety of buffalo grass with its particular characteristics and attributes. It is not adapted to distinguish one trader's goods (here, Sir Walter grass) from the goods (again, Sir Walter grass) of other traders.
48 The appellant sought to argue otherwise. In its written submissions, the appellant submitted that the evidence establishes that SIR WALTER is not used as a mere description of a product (being, in its submission, buffalo grass) but as a sign with a secondary meaning that differs from the sign's descriptive meaning. It submitted that SIR WALTER identifies a premium form of soft leaf buffalo grass, supplied by or on behalf of the appellant subject to the quality controls it imposes. The appellant also submitted that most members of the public would not even be aware that Sir Walter is the name of a plant variety distinct from the name of a soft leaf buffalo grass associated with, and supplied by, the appellant.
49 To the extent that these submissions are directed to the question of whether SIR WALTER is inherently adapted to distinguish, I do not accept them. To the extent that these submissions are directed to the inquiries arising under s 41(5) and s 41(6) of the Act, I will leave my consideration of them to later sections of these reasons, particularly as to whether, at the filing date, SIR WALTER had developed a secondary meaning.
50 In relation to the present question, I do not accept that, at the filing date, the appellant used SIR WALTER for soft leaf buffalo grass generally. First, there is no evidence that the appellant supplied, or authorised the supply of, buffalo grass of another variety called Sir Walter. In his affidavit, Mr Redman was at pains to stress "the significant research and qualitative steps" involved in the development and continuing propagation of the Sir Walter variety. I am satisfied that Mr Redman was not simply talking about soft leaf buffalo grass in general. He was talking specifically about the Sir Walter variety, and nothing else. Further in this connection, the appellant's written agreements with licensed growers and its written agreements with resellers refer to the appellant's PBR. The agreements concern "the Product" which, in each case, is identified as: Stenotaphrum Secundatum, "SIR WALTER" Buffalo. There is no evidence in this appeal of the appellant exercising quality control for buffalo grass generally or, indeed, for any turf other than turf comprising the Sir Walter grass.
51 Further, in his evidence Mr Redman directed attention to steps taken by the appellant to protect its rights. Mr Redman specifically referred to the decision of this Court in Buchanan Turf Supplies Pty Ltd v Premier Turf Supplies Pty Ltd [2003] FCA 230. However, in that case, the appellant obtained relief on the basis that the (then) respondent had wrongly represented itself as an authorised supplier of Sir Walter grass and had wrongly supplied other buffalo grass as the Sir Walter variety. If anything, the findings in that case support the conclusion that SIR WALTER is to be taken as denoting a particular grass variety - here, the designated goods.
52 Further, there is no direct evidence as to what "most members of the public" think when they see the name Sir Walter. I would not assume - and do not infer from the evidence - that members of the public are not aware that, when used in relation to grass, the name Sir Walter is a particular variety of buffalo grass. Indeed, the appellant's promotional activities, which I discuss below, would suggest the contrary.
53 The appellant specifically addressed the question posed in Clark Equipment and submitted that, if the appellant were to achieve registration of SIR WALTER as a trade mark in relation to the designated goods, there is nothing to prevent any third party from using the name Sir Walter descriptively after the expiration of the appellant's PBR. This, however, is not the test. A mark is registrable according to the requirements of the Act. The present question is whether SIR WALTER, considered in relation to the designated goods, is to some extent inherently adapted to distinguish the appellant's goods from the goods of others, not whether there are possible ways in which others can use SIR WALTER without infringement, should the sign be registered as a trade mark.
54 In this connection, the appellant also submitted that other traders could simply refer to the designated goods as "buffalo grass" or "premium buffalo grass" with their own accompanying trade marks, without any need (or, indeed, desire) to refer to the goods as Sir Walter. However, whether or not this is so is really beside the point. The issue is one concerning the nature of a trade mark applicant's entitlement. A person is not entitled to appropriate for its own use words taken from the common stock of language when others may wish, without improper motive, to use those words to designate their own goods or services. This general principle must, of course, be seen in the context of the particular requirements for registrability contained in the Act. The Act recognises, for example, that where factual distinctiveness can be established with respect to a particular sign, including a name or word, then registration of the sign as a trade mark is possible. But putting such circumstances aside for later consideration, a trade mark applicant's entitlement to obtain registration for a particular sign does not rest on whether there is a surplus of other signs that other persons can use for their own goods or services.
55 Here, the appellant developed a new thing - a new variety of buffalo grass having particular characteristics - which it called Sir Walter. Sir Walter is the given and proper name for the new variety. It has no other name. In this way, the name Sir Walter must be taken to be part of the common stock of language that denotes this particular variety of grass. In a way, the present case provides an example of the developing use and adaptation of language to describe new things: see Apple at [16]. When used in connection with the relevant goods, the name Sir Walter is no less the descriptor of the new variety because it might be possible to describe Sir Walter grass using other words. I am satisfied that, in the normal course of events, other traders would wish to use the name Sir Walter for the grass, for no reason other than the obvious one: Sir Walter is the grass' given name and accepted official designation.
56 The appellant also submitted that the degree of likelihood that other traders might wish to use the name Sir Walter is reduced by the circumstance that it holds a PBR for the variety. The appellant submitted that no other trader can properly apply that name to any other varietal whilst that right is held: see, in that connection, s 53(1)(c) of the PBR Act. But, here, the question is not whether other traders can properly apply the name Sir Walter to other varieties of grass. The question is whether other traders would wish to use the name Sir Walter for this particular variety of grass, without improper motive. As I have stated, I am satisfied that they would. The fact that the appellant currently holds a PBR in respect of Sir Walter grass does not alter that fact. It is noteworthy that the appellant has entered into numerous commercial arrangements with growers and resellers in relation to the supply of Sir Walter grass. One reason for this must be that these growers and resellers can see commercial advantage in trading in Sir Walter grass. For this reason, I have no hesitation in concluding that, absent the appellant's PBR, which is of limited duration, other persons would wish to trade in Sir Walter grass using its given and official name.
57 The conclusion I have reached on this question is consistent with the reasoning and findings in other cases.
58 In Re Wheatcroft Brothers Limited's Trade Marks [1954] Ch 210, the question was whether certain trade marks had been properly registered. The respondent in that case had obtained registration of certain new rose varieties with the National Rose Society (the society). These varieties were registered under certain names for which the respondent subsequently obtained trade mark registrations. The applicants in that case sought rectification of the trade marks register by removal of the marks. One of the grounds was that the marks lacked distinctiveness. The application for rectification was successful. Lloyd-Jacob J said (at 220-221):
In the light of the evidence before me, it is clear that at the respective dates of application for each of these marks, the respondents intended only to use each mark in relation to one variety of rose, which variety as they well knew and intended either was or would be characterized by the same name recorded in the register of the society. Had the application form accurately reflected these intentions the registrar could not have regarded the mark proposed as inferentially distinctive. An intention to use the mark as the name of a variety appears to be wholly inconsistent with a bona fide intention to use it as signifying a connexion in the course of trade with the supplier, for which purpose it must necessarily be capable of differentiating between examples of the same variety coming from differing trade sources.
If the question be posed: was the name intended for use to distinguish rose trees of the respondents' growing from rose trees of the same variety grown by others, or was it intended for use to distinguish one variety introduced by the respondents from the generality of roses, there can be only one answer, for the inevitable consequence of registration with the society was to give the name a variety status. The evidence which establishes this is not questioned, and the desire of the respondents to prevent other rose growers from offering supplies of any of these new varieties save under specific authorization, even if successful, would not affect the intention to use as such, but would merely condition the circumstances in which roses so named were dealt with in commerce.
Once the respondents decided to invite the society to accept any particular name as an identification of the variety to which it was applied, they put it out of their power to intend the name only to identify such instances of the variety as they themselves had raised. If they can contrive some manner of monopolizing the production of a particular variety, it is true that the variety name will not fall to be used save upon their products. This possibility, although it might conceivably permit the respondents to create and acquire a secondary meaning for the original variety name, would certainly not justify a registration granted without evidence of distinctiveness.
59 In Heritage Seeds Pty Ltd [2007] ATMO 4, the trade mark applicant sought to register the sign PLUS AR1 in Class 31 for "[r]ye grass seeds and grain for agricultural purposes". A PBR had been granted in respect of a fungal endophyte named AR1 which offered grass plants a measure of protection from predators whilst minimising toxicity to livestock. The opportunity to choose a ryegrass pasture which did not have the potential to cause livestock illness or to restrict livestock growth was beneficial for the pastoral industry. The question was whether the combination of the word "plus" and the registered PBR name AR1 had the capacity to distinguish within the meaning of s 41(2) of the Act.
60 A delegate of the Registrar said (at [19]):
[19] The letter/numeral combination AR1 is the name of a specific living organism. The name is registered under Australian law, by a party other than the applicant. The accepted name of such an organism, whether registered under some form of plant breeder's or variety rights law, whether generally accepted in the relevant trade or by the buying public, describes the organism. It thus has no inherent adaptation to distinguish one trader's goods from those of another, in respect of the organism itself or its host plants. Whether a trade mark incorporating such a term will have sufficient adaptation to distinguish will depend on the other material incorporated within it.
61 The delegate continued (at [20]):
[20] In this case, the additional material consists of the word PLUS. The combination, in use on the goods claimed, refers to rye grass plus the specific endophyte known as AR1. I am satisfied that the proposed trade mark is a term which other traders are likely to desire to use in connection with their goods. Other people selling ryegrass seed who wish to sell varieties with the addition of this particular endophyte are likely to need to say they are selling "ryegrass variety X plus AR1". This kind of use does not amount to trade mark use, but is descriptive use. Descriptive use does not serve to distinguish the applicant's goods from those of other traders. The trade mark is therefore caught by the provisions of subsection 41(5).
62 Implicit in the delegate's reasons is the finding that the sign was to some extent inherently adapted to distinguish because it did not consist solely of the name AR1. However, the delegate found that s 41(5) could not be satisfied because the trade mark applicant's own use of the sign was essentially descriptive. The application was rejected.
63 In Re SFR Holdings Inc (2013) 103 IPR 190, the trade mark applicant sought to register the sign SEADWARF Paspalum SDX-1 in Class 31 for "[n]atural turf, reinforced turf, turf grasses, turf seedlings, grass seeds; all being plants or plant material of the variety SDX-1 of the genus Paspalum". The applicant had obtained a PBR for the plant variety named SDX-1, with the word SeaDwarfTM designated as a trade reference. A delegate of the Registrar observed (at [23]) that the sign for which registration was sought could only be seen as a description of the goods nominated in the specification. In that connection, the delegate said:
Technically, the trade mark is severely lacking in, if not completely devoid of, inherent adaptation to distinguish.
64 Later, the delegate concluded (at [32]):
[32] The primary descriptive meaning of the trade mark is that of a particular kind of Paspalum grass. It has no secondary meaning, and is not capable of developing any secondary meaning. The whole purpose behind the genesis of the trade mark is to identify the grass which the applicant has developed and intends to market in Australia. Given that the trade mark is clearly composed of a registered variety name, the trade name for the same plant (recorded on the PBR register) and the name of the genus of grass in respect of which the two previously mentioned names are to be applied, the combination of words serves a single purpose and that is to define exactly which grass the name refers to. It can have no other purpose. As such, it is a mere description of the relevant goods, it has no inherent adaptation to distinguish those goods and thus the provisions of section 41(6) apply.
65 In Mastronardi Produce Ltd v Registrar of Trade Marks (2014) 318 ALR 249, the trade mark applicant sought to register the sign ZIMA in Class 31 for "tomatoes". A delegate of the Registrar found that the sign was a reference to a single kind of tomato plant and its fruit, and lacked any inherent adaptation to distinguish. However, in the appeal to this Court under s 35(b) of the Act, unchallenged evidence was adduced that ZIMA did not refer to - and was not used by suppliers, retailers and consumers as - a variety of tomato. It was a name coined by the trade mark applicant which it used in relation to the golden grape tomatoes (also known as "sweet orange grape tomatoes" and " golden snacking tomatoes") it supplied. In these circumstances, Gordon J concluded (at [45]) that it was unlikely that other persons, trading in tomatoes and being actuated only by proper motives, would think of the sign ZIMA and want to use it in connection with tomatoes.
66 It can be seen that the decision in Mastronardi Produce is distinguishable from the present case on the facts. The sign ZIMA was not the name of the tomatoes. The trade mark applicant was using and proposing to use the sign ZIMA to distinguish its golden grape tomatoes from those supplied by other traders. The evidence established that, in fact, the trade mark applicant was using six different seeds to produce six varieties of golden grape tomato, although in Australia, at the time of the hearing, only one seed was being used to produce tomatoes to which the sign was being applied, with the other varieties being "trialled". In Mastronardi Produce, the evidence showed that the sign was functioning or capable of functioning as a trade mark.
67 Finally, I should record that the appellant placed emphasis on the presumption of registrability in s 33(1) of the Act. While I accept that s 33(1) has a role to play in determinations under s 41(3) of the Act (see Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 at [22]; Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56-58; Chocolaterie Guylian (2009) 180 FCR 60 at [20]-[21]; Apple at [27]-[31]), I do not think that there is any doubt about the lack of inherent adaptation of SIR WALTER in respect of the designated goods which would result in the presumption working advantageously for the appellant in the present case.
68 It follows from my conclusion that SIR WALTER is not registrable for the designated goods by reason alone of s 41(3). It also follows that s 41(5) is not available to the appellant. The question then becomes whether, under s 41(6), the appellant has established that, because of the extent to which it has used SIR WALTER before the filing date, the sign does distinguish the designated goods as being its goods and not those of others seeking to supply the same goods.