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Enjoying the fruits of your labours: CJEU decides on scope of plant variety protections

Natasha Rao
16/01/2020

Locations

United Kingdom

In its recent decision Club de Variedades Vegetales Protegidas (CVVP) v Mr Martínez Sanchís (C-176/18), the CJEU has clarified the boundaries of the Plant Variety Rights Regulation (EC/2100/94) ("the PVR Regulation"), in particular the scope of protection afforded under Art 13 to material which is not liable to be used for plant propagation.

Background

The case revolved around CVVP's plant variety right ("PVR") in respect of the mandarin tree variety 'Nadorcott,' which was filed on 22 August 1995 and granted on 15 February 2006. In between these dates, Mr Martínez Sanchís had bought plants of this variety from a tree nursery, planted them, and started harvesting the fruits (importantly, these could not be used as plant propagating material for the Nadarcott variety). CVVP subsequently brought infringement proceedings against Mr Martínez Sanchís under the PVR Regulation.

Article 13(2) of the PVR Regulation sets out a number of acts which cannot be carried out in respect of a variety constituent [1],  or harvested material of the protected variety, without the authorisation of the PVR holder – including production or reproduction (Art 13(2)(a) and selling / marketing (Art 13(2)(d)). However, importantly, Article 13(3) provides that Article 13(2) shall apply in respect of harvested material only if it was obtained through the unauthorised use of variety constituents of the protected variety (and if the holder has not had reasonable opportunity to exercise his right in relation to those variety constituents).
 
A PVR holder also has certain rights of compensation in respect of acts carried out between the publication and grant of their PVR application (the "Intervening Period") (Article 95).

The Spanish first instance court dismissed CVVP's application on the basis that it was time-barred. On appeal, the Audiencia Provincial held that the action was not time-barred, but dismissed it as unfounded. CVVP appealed this decision before the Tribunal Supremo (Supreme Court).

The Tribunal Supremo decided to stay the proceedings and refer certain questions of law to the CJEU. These broadly concerned: 
  1. Whether and under what conditions Article 13(2)(a) of Regulation No 2100/94 applies to the activity of planting a protected plant variety or, particularly, harvesting fruit thereof, which is not liable to be used as propagating material; and
  2. Whether and how the fruit of a plant variety (which is not liable to be used as propagating material) can be regarded as having been obtained through 'the unauthorised use of variety constituents' (within the meaning of Article 13(3)) if the relevant variety constituents were propagated and sold by a plant nursery in the Intervening Period.

Judgment

In respect of Issue (1), the CJEU found that it was necessary to examine whether the activity in question is ultimately liable to result in the production or reproduction of variety constituents or harvested material of the protected variety (failing which, it would not fall within Article 13(2)(a)).

In this instance, because the fruit harvested by Mr Martínez Sanchís was not liable to be used as propagating material, this could not be regarded as an act of production or reproduction in respect of the variety constituent under Article 13(2)(a). It was, however, possible for the harvesting of the fruit to be regarded as an act of production or reproduction in respect of harvested material – but only so long as the conditions set out in Article 13(3) were fulfilled. The CJEU was careful to differentiate between the 'primary' protection afforded to variety constituents and the 'secondary' protection' afforded to harvested material.

On Issue (2), the CJEU reasoned that: effecting any of the unauthorised acts under Article 13(2) in respect of a plant variety would fall within the meaning of 'unauthorised use' under Article 13(3); and that Article 95 cannot be construed as meaning that the PVR holder has the right to prohibit Article 13(2) unauthorised acts in the Intervening Period (given that they are specifically only given a right to compensation).  

As such, insofar as the propagation and sale of the Nordacott plants took place in the Intervening Period, this would not be 'unauthorised use' of the plant variety under Article 13(3); and therefore the fruit obtained from these plants by Mr Martínez Sanchís could not be regarded as having been obtained through unauthorised use. However, if the propagation and sale of the Nordacott plants took place after the grant of the PVR, this could constitute 'unauthorised use.'

Comment

In this decision, the CJEU has emphasised the boundaries of the PVR right and the need to strike the proper balance between encouraging the development of new plant varieties and safeguarding agricultural production and market supply. This is achieved in part through Article 13(3) and its limitations of the scope of protection for harvested material, as well as the need to (effectively) demonstrate propagation capacity in order to fall within Article 13(2)(a).

Importantly, the CJEU has also clarified that acts which are carried out during the Intervening Period – and which would otherwise be prohibited under Article 13(2) – will not constitute 'unauthorised use', and so harvested material which is obtained through such acts will not fall foul of the PVR Regulation . PVR holders should therefore be careful to check the date of any identified acts of 'infringement' to ensure that they are, in fact, actionable.

 [1] A variety constituent is an entire plant, or part of plants as far as such parts are capable of producing entire plants, in respect of a particular plant variety (Article 5(3) PVR Regulation)

Areas of Expertise

Intellectual Property