What’s in a trademark? By any other name, would a $400 pineapple taste as sweet?

http://ipkitten.blogspot.com/2024/05/whats-in-trademark-by-any-other-name.html

The fruit industry news has been abuzz this week with reports that a new pineapple will soon be hitting the market in the United States. The pineapple, characterised by its red outer skin and produced in very limited quantities in Costa Rica, is being marketed under the name Rubyglow™ and will retail for nearly $400 per fruit. [Merpel: now that’s a recipe for an expensive piña colada!]

The producers of this luxury fruit, Fresh Del Monte Produce Inc., obtained a US plant patent (No. 33,544) in 2021. You wouldn’t know it from the recent press releases, but the patent specification indicates that the name of the variety is actually ‘Vintage Ruby’. Why does the patent use a different name from the registered trademark? And what can this tell us about branding strategy for plants?

Naming Plants

Plants have many names, including the Latin scientific names for each species. For instance, readers who speak certain other languages may recognise the first part of the scientific name of the pineapple species: Ananas comosus.

To obtain plant variety rights (and US plant patents), breeders are required to give the new variety another name, called the “variety denomination”. These denominations cannot be registered as trademarks – for example, under Article 7.1(m) of the EU Trade Mark Regulation, it is grounds for rejection or invalidity if a trademark consists of, or reproduces in its essential elements, an earlier plant variety denomination. This is because denominations are deemed generic, and consequently, Article 20(1)(b) of the UPOV Convention 1991 stipulates that:

… no rights in the designation registered as the denomination of the variety shall hamper the free use of the denomination in connection with the variety, even after the expiration of the breeder’s right. 

This rule is meant to ensure that a consistent name is used in connection with each plant variety and that others can accurately identify the plants that they buy or sell. Indeed, this principle was the basis for Australia’s unsuccessful argument that the name ‘Prosecco’ for sparkling wine should be refused registration as a geographical indication in Singapore (previously discussed by this Kat here). 

Trademarking Plants

To recoup more profits beyond the term limits of PVRs, some breeders have harnessed trademark strategy to prolong their control over plant varieties. A good example of this comes from the apple industry. Most readers would be familiar with the Pink Lady™ apple, but might never have heard of the ‘Cripps Pink’ apple. In fact, the latter is the generic denomination for the Pink Lady™ apple, named after its British-Australian breeder, John Cripps.

Through the successful marketing strategy (and not without some legal challenges), the trademark owners have generated strong awareness amongst consumers of the Pink Lady™ name. Now that the plant variety rights have expired and other producers are free to sell the variety, these other producers have a problem: they are only allowed to use the name ‘Cripps Pink’ – a name that would be meaningless to most shoppers, as Asda learned the hard way some years ago.

Meanwhile, if you routinely buy a pack of Pink Lady™ apples at the store, you might assume that you’re purchasing the same variety each time. Unlike PVR law, however, trademark law imposes no obligations to maintain a direct link between a name and a plant. Some newer, related apple varieties that are still covered by plant variety rights (such as ‘Sekzie’ or ‘Lady in Red’) are also being sold in certain territories under the Pink Lady™ trademark. They might taste just as sweet, but bearing the same trade mark doesn’t mean that they are the same thing.

Naming Strategically

Breeders usually pursue plant variety rights long before the plant reaches the market. With a duration of protection for up to 30 years for certain species, breeders might not feel the need to plan far beyond that, and will give their variety a fun or meaningful denomination without any further thought.

Some established breeding organisations, however, have developed the practice of selecting denominations that are less attractive to consumers, while reserving fancy and memorable names for use as trademarks. For example, Washington State University now markets its ‘WA 2’ apple as Sunrise Magic™, and ‘WA 38’ apple as Cosmic Crisp™. Of course, as the ‘Vintage Ruby’ / Rubyglow™ pineapple shows, there is no reason why both the denomination and trade mark can’t be meaningful – as long as they are sufficiently different. 

Nevertheless, this Kat wonders whether the growing popularity of using registered trademarks for plant varieties might affect the key function of denominations: to facilitate the clear, consistent, and unencumbered identification of plant varieties. As the latest Brexit drama has illustrated to the flower industry, too many names can spoil the effective communication about plants. 

So, while most of us won’t get a taste test of the Rubyglow™ pineapple any time soon, the new variety still gives us a flavour of the current and emerging IP issues for plants.

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