Plum opportunity missed? From domain name disputes to plant variety licensing challenges

http://ipkitten.blogspot.com/2025/02/plum-opportunity-missed-from-domain.html

In the warmer climes of Australia, the harvesting season for ‘Queen Garnet’ plums is currently underway in preparation for distribution to national and international markets. The ‘Queen Garnet’ plum received a lot of publicity some years ago as a “superfood” because of its exceptionally high antioxidant levels and claims to help with weight loss, lower blood pressure, and improve memory.

Last year, this Kat was interested to see that a plant variety rights (PVR) infringement case was initiated in Australia concerning the ‘Queen Garnet’ plum. But it’s always a mistake to get too excited for a judgment that might clarify some aspect of plant variety law: in typical fashion, the case settled in December. [Merpel: This is why you shouldn’t count your plums before they’re ripe!]

However, the ‘Queen Garnet’ plum has seen many other legal issues that allow this Kat to consider the challenges of commercialising a new plant variety. In fact, the ‘Queen Garnet’ PVR was the centre of a domain name dispute – and from what this Kat can tell, it’s the only time a PVR has been used to challenge a domain name registration. Unfortunately, the panel decision showed some slight misunderstandings about PVR protection.

Hype and Disappointment

When the ‘Queen Garnet’ plum was launched, it sold for more than twice the price of regular plums, since it contains five to ten times the amount of antioxidants compared to other fruits. Interestingly, the breeders of ‘Queen Garnet’ didn’t intend to create a variety with high nutrient levels. It was the result of a breeding programme by the State of Queensland through its Department of Primary Industries and Fisheries that actually intended to create disease-resistant Japanese plums (Prunus salicina). When they discovered the high levels of antioxidants and anthocyanins in the plum, they recognised the market potential and applied for PVR protection in Australia and other countries (including the EU, UK, Argentina, and South Africa, and a US plant patent). 

The Queensland Government granted an exclusive licence in 2010 to a company called Nutrafruit to manage commercialisation, which saw some initial success. By 2015, ‘Queen Garnet’ was being exported to foreign markets, such as being sold in the UK in Marks & Spencer. 

But with success and popularity comes the risk of IP infringement. In 2016, Nutrafruit issued public warnings to growers not to illegally produce or sell the ‘Queen Garnet’ plum. Nutrafruit brought infringement actions against some Australian growers in 2021 and 2024, but both cases settled before trial. The Queensland Government also took action to prevent online infringement through a domain name dispute. 

Denomination vs. Domain Name

Domain name disputes usually focus on trade marks and geographical indications (see IPKat here and here). However, two years after the Australia PVR for ‘Queen Garnet’ was granted, someone else registered the domain name . Since the domain name contained the denomination of their plant variety, the Queensland Government brought a complaint before a Panel of the WIPO Arbitration and Mediation Center for alternative dispute resolution. 

This Kat thinks that the Panel probably made the right decision by ordering that the disputed domain name be transferred to the Queensland Government. But the Panel did so based on shaky reasoning. Under s 53(1)(c) of the Australian Plant Breeder’s Rights Act, it constitutes infringement to use the registered denomination in relation to any other plant variety of the same plant class. From this, the Panel found:

Thus, it appears that the Plant Breeder’s Rights Act 1994 accords a grantee of PBR (in a variety) rights over the variety’s registered name similar to those which a trade mark owner is accorded in a registered trade mark.

This analogy to trade marks is wrong (see IPKat here and here). Denominations are the generic identifiers of varieties that are designed to avoid deception as the the nature of the goods themselves, not their commercial origin. 

It would constitute infringement to mislabel a different variety of plum (or related fruit, like a cherry or apricot variety) as ‘Queen Garnet’ because it might deceive consumers about the identity of the plant that they are purchasing. But the PVR owner does not get the monopoly on this descriptive name – in fact, others are obliged to use the denomination to describe the variety – and this means that PVR owners cannot register trade marks for the denomination: Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756.

Only one other domain name dispute has dealt with variety denominations –  albeit as a defence. In that case, the Panel correctly recognised that “A registered plant variety right does not by itself give rights in the nature of a trademark right. Plant variety rights give the registered owner a right to exploit the variety.” Therefore, even though the defendant asserted that they had some connection to the owners of the PVR for the ‘Felsina’ potato variety, this was not enough to show a legitimate interest in a domain name that conflicted with the rights of an Italian business that produces Fèlsina wine in Tuscany.

The Challenges of Plant IP Law and Strategy

The ‘Queen Garnet’ domain name dispute highlights some poor drafting in the Australian Plant Breeder’s Rights Act. It is a little confusing to deal with misuse of the variety denomination in the same section as PVR infringement, since denominations remain attached to the plant after the PVR protection expires. Other jurisdictions deal with the limitations on the use of denominations and the positive obligation to use the denomination in different sections of their PVR laws (for example, see Articles 17-18 of the EU Plant Variety Rights Regulation).

Meanwhile, the denomination seems to be the least of Nutrafruit’s worries. In 2019, Nutrafruit had engaged an American company, AIGN, which specialises in the global management of plant IP, fruit tree commercialisation, and nursery operations, to take charge of the global marketing and commercialisation of ‘Queen Garnet’, especially in the US market. But last year, Nutrafruit accused them of breach of contract due to various concerns, such as AIGN’s failure to pursue trade mark applications overseas.

For example, Nutrafruit complained that AIGN had failed to obtain PVR protection in any other territories, such as China or New Zealand. But AIGN correctly noted that the international grace period for seeking PVR protection had expired in 2016, before they became involved in the management of ‘Queen Garnet’ (see previous discussion of novelty rules for plants here). While AIGN hoped to resurrect existing applications (like the New Zealand PVR application that lapsed on 16 October 2024 after the trees in quarantine died), there was nothing else they could do. 

However, the Supreme Court of Queensland found that AIGN had delayed in bringing a challenge to the validity of Nutrafruit’s termination, and so the Court declined to grant an injunction in October 2024: Associated International Group of Nurseries Inc v Nutrafruit Pty Ltd [2024] QSC 234. Nutrafruit is now trying to pursue global commercialisation itself.

Final Thoughts

The commercialisation of plant varieties can be surprisingly complicated. On the one hand, breeders need to understand the generic function of the variety denomination and develop their trade mark and brand protection strategy accordingly. On the other hand, it is important to seek PVR protection in all the desired territories in a timely fashion. This process has additional challenges because of the living subject matter, which must be exported, quarantined, and grown for evaluation against the PVR requirements. However, without this protection, the ‘Queen Garnet’ variety has effectively entered the public domain in many important markets.

So, while plant IP seeks to protect the fruits of a breeder’s labour, as this case shows, if you delay too long, it can leave a bitter taste in your mouth.

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