Trademarking Wollemi Pine
Trademarking Wollemi Pine
Institutions like Lotusland in Santa Barbara, the Huntington Garden (see photo
below) and Library in San Marino and Quail Gardens in Encinitas all took plants.
About a week later I was told that Birkdale Nursery had trademarked the name …
I had an interesting email from Bruce Ironmonger.
Bruce is an Australian citizen who currently resides in the USA in the San Diego area with his wife Suzi. They operate a large cycad nursery in San Diego and regularly import cycads from Australia to the USA and are very familiar with the protocol for the import/export of plants.
Bruce takes up the story, it’s a bit long but it’s full of intrigue….
“My interest in Wollemi Pines stems from my interest in cycads and my good friend Ken Hill (from Sydney Botanical Garden) has told us the whole story regarding his description of the species. On a visit to his Sydney office we were shown seed cones, leaf samples and a trunk cross section. This was back in the late 90s and sparked our interest in the trees even more, so I made several enquiries to Birkdale Nursery (the Australian nursery involved in the official release of the plants) over the next five years and never received the courtesy of a reply from them.
I started making enquiries and found out that the Wollemi Pine could quite easily be imported into the USA. In August 2006 I applied to the Australian Dept of Environment and Heritage for an Export Permit for Wollemi Pines from Australia to the USA. I was granted this permit late in August and it was good for multiple use with no number restrictions to anywhere in the world.
At this time I purchased 50 Wollemi Pines from retail nurseries in Southern Queensland bearing in mind that the USA has a maximum plant size for import of 50 cm and a ‘no soil’ requirement. I bare rooted the plants (see photo at right) and had them inspected and AQIS issued a Phytosanitary Certificate for Export, I also obtained an Export Certificate from Australian Customs. The plants were shipped to Los Angeles and inspected and released by USDA Inspection Station.
That’s when the fun started….
As we have many friends in Botanical Gardens throughout the USA I emailed
some of them letting them know that I had the Wollemi Pine available if they would like to acquire them for their collections. Institutions like Lotusland in Santa Barbara, the Huntington Garden (see photo below) and Library in San Marino and Quail Gardens in Encinitas all took plants.
About a week later I was told that Birkdale Nursery had trademarked the name “WOLLEMI” in the USA, that I had illegally imported and sold the plants, and we were going to be sued by Birkdale Nursery, the governments of Queensland and New South Wales and the Royal Botanic Gardens for illegally importing Wollemi Pines into the USA. Even though I had permits from the Australian Government to do so.
A few quick phone calls revealed that yes indeed Birkdale Nursery had trademarked the name in the USA but my contacts could not work out how they did it as it is the published common name of a plant species, a geographic location, and an aboriginal word, all of which should preclude it from being registered as a trademark.
We had donated four plants to Quail Gardens, where my wife and I are Patron Members, and Quail put out a press release announcing the acquisition of the plants. Quail Gardens was then advised that to avoid being named in any legal action they needed to ‘cease use of the Wollemi mark and remove from display the trees you have pending the resolution of the suit with Mr. Ironmonger’.
So at this stage I guessed that we had a problem …. Wollemi North America threatening to sue a Botanical Garden over a Trademark. And three days later we received an email of a Lawsuit from Birkdale Nursery suing us for $1,000,000 in damages.
I was still in Australia with 200 plants ready to be shipped to the USA. So being the optimist that I am I went ahead and shipped them ….. This is where the waters become very clouded and murky. On arrival in the USA they were transported to the USDA inspection facility and it became very clear to our shipping agent of 10 years that something was amiss, the next day the plants were “deemed” to be infected with a canker infestation an would need to be destroyed or sent back to Australia. My wife was handling it back in the USA as I was still in Australia so on a Friday afternoon I contacted AQIS Head Office in Canberra and they thought it was very strange so they issued re-entry permits for the plants to be sent back to Queensland and inspection at the Brisbane Quarantine facility.
Well that brings us up to the present day ….. it will be interested to find out what the next chapter will be with the general release of plants in April.
At this point it should be pointed out that the Wollemi Pine (Wollemia nobilis) is a species and as such can NEVER be subject to ANY patents nor Plant Breeders Rights restrictions, when the plants were released in Australia anyone or everyone could do whatever they liked with their plants, sell them, bonsai them, propagate them or grow them for firewood.”
Well, I said it was interesting, didn’t I?
Obviously, this is only one side of the story but I have no reason to doubt what Bruce claims.
The strangest part is this trademarking issue. Would Bruce have had the same problems if he had referred to the plants as ‘Wollemia nobilis‘ rather than ‘Wollemi Pine’?
As Bruce says, ‘Wollemi’ is a recognised common name for the plant as well as having geographical and aboriginal connections so how can it be trademarked.? A quick stroll through the Wollemi Pine International website (www.wollemipine.com) does indeed show a trademark symbol next to the word ‘Wollemi” on the pages dealing with the North American release of the plants. However, no trademark appears on pages dealing with release of the plants in other parts of the world.