Thu 6 Feb 2014
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My thanks to Thomas Leidereiter for pointing this out to me. However, the commentary below and any errors or inaccuracies it contains are mine alone. Remember that PFE is not qualified to give legal advice and the following should merely be regarded as personal opinion.
The European Commission has proposed amendments to the Regulation that controls Community Trademarks (CTMs). CTMs are often used for branding plant varieties, series of plant varieties or even entire breeding programmes. For example, we look after plants covered by the CTM “Walberton’s” which is applied to plants originating from breeding activites at Walberton Nurseries. We attach brand values of quality and the assurance of many years of experience and trialling of new varieties. Other examples that you would be familiar with are the mark “Surfinia” (Suntory), applied to the well-known Petunia breeding, and “Wave” which is used for Petunia and Viola (Ball Horticulture).
CTMs are regulated by EC Regulation 207/2009 which you can read here. The European Commission has proposed amendments which are contained in document COM(2013) 0161 final, whch you can read here. Paragraph 10 of the latter document proposes the addition of a new paragraph (l) to Article 7 of the former, which is the section that covers absolute grounds for refusal for CTMs at the application stage. The new text reads as follows:
“trade marks which contain or consist of an earlier variety denomination registered in accordance with Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights with respect to the same type of product”
This is a new provision. Consider it carefully. If one applies for a CPVR using the name “Whatever”, one could then not obtain a CTM in the word “Whatever” for class 31 goods (plants), even though you would be the owner of both the CPVR and the CTM. “Pink Whatever” or “Whatever Beauty” would also be disallowed.
Moreover, if you wanted to apply for a CTM for class 31 and that contained a word that had previously been used by anyone as the variety denomination for a CPVR, then your application would be refused without any further consideration, even if the variety had been commercialized under a different (marketing) name.
The upshot of this proposal is that vast swathes of potential trademark names have been rendered unusable (there have been more than 40,000 applications for CPVR, I believe). Furthermore, applicants for CPVR will have to use a codename for the denomination if they have any intention of applying for CTM for their variety (which is probably good practice anyway). Potentially, existing CTMs which contain or are the same as CPVR variety denominations that pre-date the CTM application could be challenged and declared invalid.
Also, note that the amendment only refers to Community Plant Variety Rights and not to national PVRs in the Member States. So, potentially (and we’re being wilfully obscure here and our learned friends may well pull this to pieces!) a breeder could apply for a national PVR in a Member State in January 2015 and then apply for CTM in March 2015. In the meantime, no commercial exploitation of the variety is undertaken. Then, in January 2016 (before the first anniversary of the national PVR application), the applicant submits an application for CPVR using the rule of priority to claim the earlier filing date. Because the owner of the CPVR is the same as the owner of the CTM, the CTM does not preclude the use of that name for the CPVR denomination and yet, because the CPVR is filed after the CTM, the CTM remains valid. (Mind you, this would be very convoluted and potentially costly, just for the sake of not using a codename for the CPVR denomination).
All of which is jolly exciting and nicely illustrates why breeders pay a company like Plants For Europe Limited to worry about this sort of stuff so that they don’t have to!