Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks  FCA 756 (24 July 2015)
This was an unsuccessful appeal by Buchanan against an earlier Trade Marks Office decision refusing an application for registration of SIR WALTER as a trade mark for “turf grass” in class 31. The earlier decision is reported in the March 2014 decisions.
The SIR WALTER trade mark application was filed on 26 July 2012 and distinctiveness needed to be considered under s41 as it stood prior to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into effect on 15 April 2013.
Buchanan had previously applied for protection of Sir Walter as a plant variety of buffalo grass under the Plant Breeders Rights Act 1994 (Cth). That application was filed on 30 September 1996 and granted on 27 March 1998 for a fixed term expiring on 27 March 2018. This gave Buchanan certain exclusive rights to, or license other persons to, deal with the propagating material of the plant variety, but s27(5) of that Act prohibits the name of a plant variety being or included in a trade mark in respect of live plants, plant cells and plant tissues.
Yates J reviewed the application of s41 and agreed with the Registrar that SIR WALTER is not to any extent inherently adapted to distinguish turf grass as Buchanan’s goods. Other traders of buffalo grass would want to make honest use of the words Sir Walter for the sake of the signification which these words ordinarily possess, being the name of a particular plant variety for buffalo grass. These words denote the Sir Walter plant variety of buffalo grass with its particular characteristics and attributes. As such they are not adapted to distinguish Buchanan’s Sir Walter grass from the Sir Walter grass of other traders. Buchanan developed a new variety of buffalo grass which it called Sir Walter. This is the given and proper name for this particular variety and it has no other name. As such, the name Sir Walter must be taken to be part of the common stock of language that denotes this particular variety of grass and is an example of the developing use and adaptation of language to describe new things.
In light of this finding, the only way for SIR WALTER to qualify for trade mark registration is under s41(6) namely that, because of the extent to which Buchanan has used it as a trade mark before the filing date (26 July 2012), it has become factually distinctive of Buchanan’s designated goods in class 31.
Yates J did not accept that Buchanan had used SIR WALTER for soft leaf buffalo grass generally or any other turf. Rather, all such use was for the specific variety of buffalo grass developed by Buchanan.
His Honour reviewed the affidavit evidence relied upon by Buchanan which revealed three broad forms of use of SIR WALTER prior to the filing date, namely (1) use in writing and spoken word in television and radio commercials of SIR WALTER, by itself, as a name, (2) use of SIR WALTER with a Knight Device, and (3) use of SIR WALTER in combination with a Knight Device and the words PROUDLY SPONSORED BY SIR WALTER in a roundel surrounding the Knight Device.
His Honour characterised the evidence of use of SIR WALTER by itself as overwhelmingly and unequivocally showing use of these words to designate a particular thing, namely the Sir Walter grass, not use of SIR WALTER as a trade mark to distinguish Buchanan’s Sir Walter grass from other traders’ Sir Walter grass. The other uses with the Knight Device were not sufficient to establish SIR WALTER, by itself, functioned as a trade mark. Hence, Yates J was not satisfied Buchanan’s evidence demonstrated factual distinctiveness of SIR WALTER as a trade mark before the filing date and ordered Buchanan’s trade mark application should not proceed to acceptance unless it is amended by deleting reference to the class 31 goods.