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PBRs/Trade marks etc

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PBRs/Trade marks etc

Post by Admin on 25th July 2009, 11:15

I thought I would open a dialogue on some of the legal issues surrounding breeding and introducing roses, based on information I am aware of so far, so that people who are interested in it have a better idea of how to proceed.

The way rose naming works is that once a breeder develops a rose they would like to release they first go to the The International Cultivar Registration Authority - Roses website and register to get a three letter prefix for their name. Mine is 'VOO'. Then you can register the name of your rose here for free. This does nothing except prevent somebody else from choosing the name you want for your rose and provide an official name under which the rose will always be known, whether it is released or not. There has been a rather silly pattern developing over the last 20-30 years surrounding the use of non-sensical names being used as the official rose name that came around first by people trying to find an easier and cheaper alternative to applying for a patent. They have taken to using this three letter code for their name (like mine is VOO... in uppercase) and using this as the prefix for their variety name with some letters after it that is suppose to make some kind of name. So if I bred a rose that I wanted to market as 'The Hairy Fairy' I could register it as 'VOOhairy', and add the marketing name, 'The Hairy Fairy', as a synonym under which the rose is also known. The official registered variety name is, however, 'VOOhairy' for time eternal. The reasoning behind this was that no-one in their right mind would market a rose under the name 'VOOhairy' and then one could trade mark the marketing name and so prevent anyone from selling this rose under this name for the life of the trade mark. There are a few issues with this. First it doesn't prevent anyone from selling it under a different name and thus avoid any copyright infringement. They can even sell it under a different name and trade mark this themselves, as unscrupulous as this sounds. The second issue, that will be explained a bit further down, is that this actually renders the trademark invalid under modern trade mark law making the trade mark not worth the paper it is written on. This is an incorrect use of a trademark.

In Australia, you can go a number of different directions. You can choose to do nothing and allow your rose to be propagated by anyone and receive no royalties from the sale of each rose. This can be good for breeders to just get their roses out there and their name known so long as the propagators continue to do so under the registered name. There is, however, nothing stopping someone from taking out their own PBR on your rose or even selling it under their own name and registering it as their own. Personally, I would not choose this avenue unless I was distributing it to people I trusted for testing or to family etc. When you think about it, producing a rose for commercial release take a long time and a lot of effort and money. You need to buy parent plants, grow them to maturity, make the crosses, stratify the seeds and grow the seedlings (we are up to 2-3 years already). Then the seedlings need to be culled and the chosen ones trialled in places around the country with varying climates for at least 3 years, but often as much as 7 or 8 years, and then you need to propagate it in commerical numbers and market it.... that's a lot of time and money to get anything out there and it makes sense to try and get some kind of return on your investment and want to be able to protect your investment as much as possible.

This brings me to trade marking. Trade marking does nothing to protect your rose either and in reality is being used incorrectly by lots of breeders all over the world. A trade mark is a name, colour, or object that you want to associate with your product and so is in effect an identity only. In trade mark law if you make the trademark the actual name of the product then that makes the trade mark invalid and open to legal challenge. For example Poulsen's have developed a line of miniature roses they call 'PatioHit' roses. Each rose in this line also has an official registered name. I have one of these little roses called 'Alicante'. So they have trade marked the name 'PatioHit' and registered the name 'Alicante'. This rose can now legally be marketed by them only as a 'PatioHit' rose to which they have attached the name 'Alicante' and would be written on the label as 'PatioHit Alicante'. I cannot grow the rose and advertise it as a 'patioHit' rose because I do not hold the trade mark for the term 'PatioHit' and it is not my identity. This is the correct use of a trademark and registered name. It does not stop someone trademarking a term like 'Potted Colour' and then calling it 'Hot Pink' and marketing this rose as 'PottedColour TM Hot Pink'. A trade mark is meant to protect an identity rather than the product itself. If you decide that you don't want anyone else marketting your rose as 'The Hairy Fairy' and you decide you want to trade mark the name 'The Hairy Fairy' then you are making the trade mark the product and under trade mark law when this occurs the trademark becomes invalid. So if David Austin was to register their rose called 'Mary Rose' as AUSmary (which they have), and then trade mark the name 'Mary Rose' then this would be an invalid use of a trade mark with the added disadvantage that this rose is now permanently known by this silly name of AUSmary with no rights or royalty protection at all. On the other hand if David Austin was to trade mark the term 'English Rose' then no one else would be allowed to sell roses as 'English Roses'.

That brings me to PBRs. This stands for Plant Breeders Rights and is, in effect, a plant patent designed to protect the breeder's rights to collect royalties on the variety and prevent the illegal propagation and sale of their varieties. The breeder can visit IP Australia: PLant Breeders Rights and apply for a plant patent. In this process the variety is patented under its registered name first. In the case of David Austin's 'Sharifa Asma' its registered name is 'AUSreef'. 'Sharifa Asma' is listed as a synonym, and exhibition name, and this name is also listed on the PBR. The process of applying for a PBR is long and costly with an ongoing $300 annual cost, at time of writing, to maintain it for the 20 year life of the PBR bringing the total cost of a patent, over its 20 year life, up around $8000 to $10,000 which includes the initial applcation fees. These applications can take a long time to be granted and the breeder is not allowed to release the rose until it is granted. They have made exceptions to the definition of 'release' to exclude sending plants out to people for testing, but in general it can't have been handed out anywhere prior to the application being made to ensure that the variety has no prior applications under a different name. Once your PBR is granted it is published in the industry journal called the Plant Varieties Journal. A nursery may read this and then contact the breeder and offer to propagate and distribute your variety under license. This means that you will continue to receive a royalty for each plant grown and sold under the license agreement for the life of the PBR. This works for the breeder and for the nursery. Once the PBR expires the nursery is perceived to be the exclusive producer of the variety and will continue to receive the benefits of of this association long after teh PBR has expired. Of course there are other options. You can sell your variety to a commercial grower for a one off substantial fee giving them complete license to do as they want with the rose. They may choose to apply for a PBR and are then responsible for all costs involved. The rose is still credited to you from when you registered the variety but you will receive no fruther roylaties from the sale of the rose. You can also arrange with the commerical grower to undertake a license under which the breeder will still receive a royalty but the grower takes out the PBR. Or, you could take on the huge task of propagating, marketing, and distributing the variety yourself. Once a PBR has been granted it is now illegal to sell this variety under any name but it is the responsibility of the PBR holder to prove copyright infringement if suspected. So if DA saw one of his roses being sold on these forums that was protected by a PBR then he would be within his rights to seek damages. If he saw a rose being sold on here that he suspected was his rose but was being sold as 'Yellow Old Fashion Rose' he could still seek damages but it would be up to him to prove that it was infact his variety. With DNA technology becoming more accessible and cheap this is becoming an easier thing to do. David (Roseman) has had some correspondance with David Austin Australia regarding this issue and has had some informative feedback and people should be aware that places like David Austin LTD in Australia are aware of this forum and so may be keeping tabs on it.

So, the trick is to try and predict what the most sensible choice is for your circumstance and to get good advice from a patent lawyer if you choose to go down the path of getting a PBR. You would want to know that you could recoup the cost of the PBR over the life of the PBR (which is why it is sometimes better to let the big boys with deep pockets take care of this part, especially for small backyard breeders like most of us here). You can save gobs of money if you do it yourself and the PBR contacts are there to offer advice. I have only covered what I know myself from information I have gleaned from all over the place. If you are going through this process you would be well advised to use this article as a starting point only.

Admin

Number of posts : 3739
Location : Mudgee
Registration date : 2008-02-08

http://www.rosetalkaustralia.com

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