News & Insights

News out of the US is that lettuce grower Little Leaf Farms LLC is seeking to register a trade mark for the shape of a curled and curved lettuce leaf.

The application

On 28 April 2023, Little Leaf Farms applied to register US trade mark 97912382 for the following trade mark:

As described in the application, “the mark consists of a three-dimensional configuration of a lettuce leaf with a curled and curved spine leading into ruffled edges.” Registration is being sought in relation to the goods “fresh lettuce”.

Are shapes registrable as trade marks?

In the USA as in Australia, it is possible to register shapes as trade marks.

While many shape trade marks in the food industry are for the packaging of products, shape trade marks for the products themselves exist. In Australia, the Freddo Frog chocolate and the Toblerone triangles are both protected by shape trade marks for the naked product.

So is the lettuce leaf shape registrable?

In Australia, under section 17 of the Trade Marks Act 1995:

“A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

To be registrable, a trade mark must be distinctive. In Australia, under section 41 of the Trade Marks Act 1995, there are three levels of distinctiveness:

1. A trade mark that is inherently adapted to distinguish. This will not encounter a distinctiveness objection.
2. A trade mark that is somewhat inherently adapted to distinguish.
3. A trade mark that is not at all inherently adapted to distinguish.

The second and third categories will encounter an objection for lack of distinctiveness. In the second category, this can be overcome by evidence that through use, either before or after the filing of the application, the trade mark will become factually distinctive. The third category presents a higher hurdle: evidence must show that as at the date of filing of the trade mark application, the trade mark had already become factually distinctive.

It is likely that in Australia, the lettuce leaf would fall into the third category. According to the news article, apparently, these curly leaves do already enjoy some recognition. Australia has seen some well-publicised fights over distinctiveness in the past, most famously between Cadbury and Darrel Lea over the colour purple for chocolate. But it very much depends on the evidence that can be filed by the applicant as to whether that will be sufficient.

Is it all worth it?

In Australia, under section 120(1) of the Trade Marks Act 1995, infringement only arises if somebody else is using as a trade mark a sign that is substantially identical or deceptively similar to the registered mark, in relation to the goods or services in respect of which it is registered.

The key here is “as a trade mark”. A competitor selling similarly curly lettuce leaves is likely to argue that the curl is simply the shape of their product and is not intended to function as a trade mark. When combined with strong branding used on the product packaging, that argument would be strong and potentially render the lettuce leaf trade mark, even if registrable, practically impossible to enforce.

Are there other options for Little Leaf Farms?

The article reports that the characteristic shape of the lettuce leaves comes from the particular plant variety, in combination with the growing conditions.

In Australia, new plant varieties can be protected under the Plant Breeder’s Rights Act 1994. Also, methods of manufacture such as unique and inventive combinations of light, water, nutrients and other growing conditions could be registered as a patent under the Patents Act 1990.

The take-away

Real IP innovation occurs in the food and horticultural industries. Identifying the most appropriate IP rights, whether that is a trade mark, a patent or a plant breeder’s right, is critical. Particularly for rights such as patents and plant breeder’s rights that have narrow time windows during which registration can be sought.

It’s important to be commercial about any IP registration journey. Are you going to have anything protectable at the end? Our Macpherson Kelley IP team prides itself in our commercial approach and talking straight with our clients. Sometimes, that involves having to challenge our clients on whether the journey is going to be worth it for them, in their circumstances. Because for us, relationships come first, we’re not just trying to push a service.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.