A guide to trademarks, patents and plant breeders’ rights

The use of trademarks, patents and plant breeders’ rights can make an agricultural business more competitive locally and internationally. Gerhard Uys spoke to David Cochrane and Madelein Kleyn about the application processes involved and the implementation.

sernick-bonsmara-beef-trademark-
Trademarks cannot be too descriptive or attained for ordinary words used in an industry, and must be distinctive. For example, ‘Bonsmara’ would not be a trademark, but ‘Sernick Bonsmara Beef’ could be trademarked as it is more specific.
Photo: Courtesy of Sernick

Trademarks, plant breeders’ rights (PBR) and patents are effective in ensuring that ideas and produce are protected and able to generate a profit as a result of exclusivity and reputation.

According to David Cochrane, intellectual property rights lawyer at Spoor and Fisher, there are three principal areas of intellectual property (IP): trademarks, patents and plant breeders’ rights,

Trademarks 
A trademark is a brand name, slogan or logo that distinguishes the goods and services of one producer from those of competitors.

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“Trademark protection can be obtained automatically through the development of a reputation. If a farmer has a good reputation generated by his trade name, he may already have protection under common law,” Cochrane explains.

While the formal registration
of a trademark is thus not necessary, a farmer will be able to legally protect his trademark from use by competitors if he can prove that it distinguishes his goods or services from those of his competitors, and if it has been used in the development of his reputation. Proving this, however, may be difficult.

Dr Madelein Kleyn, a patent attorney and group general manager: legal and intellectual property at Oro Agri International, a company specialising in environmentally friendly crop protection products, nutrients and soil conditioners, has first-hand experience of implementing these legal processes in the real world.

She agrees with Cochrane, stressing that in terms of common law, the proprietor would have to prove that he or she marketed the brand first, and that therefore a registered right provided a stronger remedy whereby third parties could be legally restrained from using the registered trademark.

Register company names and trademarks
It is advisable to register a company name and trademark simultaneously. Many farmers fail to realise that company name registrations do not pertain to trademarks, and the name of a company owned by one party can be owned as a trademark by another.

Trademarks are granted on a first-to-file basis. It is also possible to have the same trademarks for different products, as trademarks are classified according to goods and services classes.

Trademarks cannot be too descriptive or attained for ordinary words used in an industry, and must be distinctive. For example, ‘grassfed’ would not be a trademark, but ‘Karan Grassfed’ could be trademarked as it is more specific.

File for trademarks ASAP
Kleyn says that Oro Agri files its local trademarks as soon as the company begins researching a new product.

“No product names are elected until we have verified that a new brand is available for use, and not already registered, or that a similar trademark is already on the register,” she explains.

“With new products, Oro Agri tests the various markets before filing trademarks. In our industry, however, we have regulatory requirements [similar to pharmaceutical clinical trials] where products have to be registered at the specific country’s relevant authority, and various trials and toxicity data have to be generated.

When such an application is filed, the product must have a name, and we often register our key trademark in as many countries as possible before the regulatory approval process commences.”

Patents
A patent grants the applicant the exclusive right to exclude others from making, using, or selling an invention or concept.

This includes not only inventions of things, but could include, say, a new farming method.

“Subject matter can only be patented if it’s new, has not been disclosed in South Africa or anywhere else in the world, and is inventive. What is deemed inventive is generally weighed by the view of skilled persons in the relevant industry in which the patent claims cover,” Cochrane says.

To obtain a patent, the inventor must file an application. In most countries, the patent will then be examined for patentability requirements, and the patent may subsequently be granted. However, this does not apply in South Africa, as patents are currently not examined.

“The benefit of a lack of patent examination in South Africa is that the process is less expensive and quicker. The drawback is that the lack of examination may have the effect of invalid patents being granted,” Cochrane says.

The 2013 South African Intellectual Property (SA IP) Draft Policy has indicated that the patent law should be amended to implement, amongst others, a patent examination system. According to Cochrane, the patent office is currently training 20 people as patent examiners.

The process
South Africa’s patent application process allows the inventor to file a provisional application, which must be completed within 12 months. The provisional patent protects the invention for the period of this legislative time-frame.

However, if this period expires before the applicant has submitted a completed application, the provisional application will not be extended and the invention will lose its patent protection.

Furthermore, only a patent attorney can complete and file the completed application, which provides patent protection for 20 to 25 years from the date of filing, subject to the payment of annual renewal fees. At the end of the term, the patent’s subject matter becomes accessible to the public.

“In return for 20 years’ exclusivity, you have to allow access to the information without penalty after expiry of the patent right,” Cochrane says.

Kleyn stresses that one of the key requirements for patentability is novelty.

Plant Breeders’ Rights: a lot to prove
PBR grant the breeder of a new plant variety exclusive rights for the propagation and harvesting of the specific plant variety for a number of years.

“In terms of the patent act, you cannot get protection for a plant variety produced by normal breeding techniques. A new plant [variety] developed by normal crossbreeding can, however, be protected by PBR,” Cochrane says.

To apply for PBR, the grower must prove that the new variety is distinct from all other known varieties. The Department of Agriculture, Fisheries and Forestry (DAFF) registers and handles all PBR. The applicant must complete a technical questionnaire that describes the plant’s phenotypic characteristics.

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“Foreign companies that want to apply for PBR in South Africa have to import the plant, grow it here and then prove that it is a new variety that complies with the different characteristics that were identified in the application, and not simply an outlier due to something like a drought or climate,” Cochrane explains.

Most importantly, the plant has to be distinct, uniform and stable, and will be tested over multiple generations. If it meets the criteria, PBR are granted. Anyone infringing on PBR by propagating the plant variety protected by PBR could be forced to remove any and all of the relevant plants.

New plant varieties commonly have two names: the varietal name (or denomination) and the trademark name. It is therefore important that a producer registers the trademark name, as well as applies for PBR, to protect the exclusivity of the new variety.

“Take, for example, the apple variety, Pink Lady. The trademark is Pink Lady, but the variety name is Cripps Pink. The PBR for the variety lasted for 25 years and has now expired. Anyone can grow and sell the Cripps Pink variety, but permission is required to use the trademark Pink Lady for the fruit.

“There are other Cripps Pink apples on the shelves, but many consumers know and will naturally choose Pink Lady. Only certain growers, who have a licence, are allowed to trade under Pink Lady,” Cochrane says.

International IP protection
Kleyn advises farmers who want to use South Africa as a base to sell their goods or services internationally to ensure that the appropriate risk analyses have been conducted to identify opportunities and manage risks.

She explains that while Oro Agri is a small company, it sells its products in over 90 countries through distribution networks, business relationships and strategic alliance partners.

“Networks are very important. The [basic requirements] are that as long as you can show your product works [Oro Agri creates video material, trial results, and provides numerous comparative results to prove that its products are effective], you will have results.”

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Oro Agri’s business model for IP exploitation is to own its IP and license its inter-company partners and worldwide distributors.

Most of Oro Agri’s IP portfolio management, including drafting of patent specifications and responses to office actions (patent examination reports), takes place in-house. Patent attorneys are used for filing in most countries where an in-country qualified patent attorney presence is required for filing. One of the advantages of using attorneys for this purpose is that deadlines are met and local legislation is correctly followed.

Processes of examination of patents or trademarks differ from country to country, mostly because various offices and examiners perceive novelty and inventiveness in a different way. Kleyn suggests that producers who wish to market in countries where they do not have a footprint should follow Oro Agri’s example and form strategic alliances with locals in the relevant country.

Email Dr Madelein Kleyn at [email protected], or David Cochrane at [email protected].