TurfBreed succeeded this month in re-confirming the status of our Empire Zoysia® trademark following a request by a third party, to IP Australia, seeking the “…revocation of registration”.
The assertion had been made that Empire was noted as a trade reference on the Plant Breeders Rights (PBR) registration, notably this is also the case for both TifTuf and Tahoma 31®.
IP Australia has now clarified that the trademark reference is, ‘just that’, a reference for the Empire Zoysia® brand and not the variety name which is SS-500.
TurfBreed had previously been challenged by Lawn Solutions Australia (LSA), who sent a legal letter on 14 January 2022 to IP Australia, demanding that TurfBreed withdraw the trademarks registered for Empire Zoysia®.
In responding, by letter, to the “ …revocation of registration…” IP Australia said “…we are satisfied that the owner of the registrations has demonstrated sufficient efforts to differentiate the trademarks from the variety name SS-500, even if some of their material and third parties referring to the variety do not always do so…”.
What’s the difference between PBR and a Trademark
PBR provides legal protection to a breeder for 20 years so that they can invest in and benefit from the exclusive use of their new plant variety, in the case of Empire Zoysia® this was SS-500.
For example, SS-500 was the variety protected by the PBR, while Empire Zoysia® is the registered trademark that TurfBreed owns and has developed to support the sales of this variety across its network of growers.
While a PBR lasts for 20 years, a trademark has no expiration, as long as it is in use, which in this case is Empire Zoysia®. This protects the owner (TurfBreed) of the trademark by preventing competitors from selling a product using TurfBreed’s branding or marketing without consent, and the licenced growers in TurfBreed’s network who can use the trademark and associated marketing assets to add value to their businesses. Anyone using this trademark without explicit approval of the trademark owner, is at risk of defrauding both the customer and the trademark owner.
In the case of Sir Walter Buffalo grass, when it was registered for PBR it was done so under the same name that it was to be marketed as (for example, “Sir Walter”). This meant the name “Sir Walter” became ineligible to be trademarked once the PBR expired.
As a result, following the expiry of the PBR in 2017 there is now no legal “trademark” protection for the Sir Walter Buffalo brand – meaning any turf grower can grow Sir Walter Buffalo or sell any Buffalo grass under the Sir Walter Buffalo name without paying licencing fees.
Looking ahead … This decision provides a precedent for the industry and certainty for TurfBreed growers who are licensed to use the Empire Zoysia® trademark for marketing purposes will continue to enjoy the returns of the brand that has been strongly built-up and marketed over the years.
Letters from IP Australia:
Request to consider revocation of registration – trade marks 2044953 and 2044957
Revocation of registration not proceeding
For more information contact TurfBreed Managing Director – Steve Burt M: 0419 007 398 E: sburt@turfbreed.com.au