[Gert Würtenberger]
Upon request for preliminary ruling from the Tribunal Supremo, Spain, the European Court of Justice was asked to interpret Article 13 of Council Regulation (EC) No. 2100/94 of 27 July 1994 (BR).
The core of that decision was the question of the scope of breeder’s rights between the publication of an application for grant of a CPVR and final grant of the same (Article 95 BR). Article 95 BR must be seen in relation to Article 13 (2) and (3) BR which determine the rights of a holder of a CPVR. Both determine the scope and limits of protection of breeder’s rights on different levels: the period during which the candidate variety is examined with regard to the protection requirements and the period after grant of the protection. As the two stages provide different scopes of protection, the system is also called “protection system”.
Article 13 BR determines the rights of the holder of a CPVR as well as the prohibited acts.
The basis of the dispute was the following: the alleged infringer purchased from a nursery that was open to the public plants of the protected variety Nadorcott, a mandarin tree variety. At that time, the variety was not yet protected as it was pending in application proceedings. Thus, no infringement could occur. After protection was granted, the purchaser replaced several plants of that variety with new plants he purchased from the same nursery.
Infringement proceedings against the purchaser were initiated on the ground that he had infringed the plant variety rights of the holder. With regard to the plants bought and planted prior to grant of protection of the subject CPVR, “provisional protection” was sought. Regarding the plants replaced after grant of protection, infringement claims were raised. The plaintiff asked for discontinuation of all commercial activities related to the plants – including marketing of the food obtained from the trees – and compensation for the damages allegedly suffered as a result of the acts undertaken both during and after the provisional protection period.
The action was dismissed by the first instance as well as by the second instance.
The plaintiff brought an appeal on a point of law against that judgement before the Tribunal Supremo. The Spanish Supreme Court submitted three questions to the Court of Justice of the European Union (CJEU) on the interpretation of the relevant Article 13 BR:
• Does harvesting of fruits of a protected variety, planted before the CPVR came into effect, constitute an act of production or reproduction within the meaning of Article 13 (2) of the BR or an act in respect of harvested material within the meaning of Article 13 (3) of the BR?
• Does Article 13 (2) BR refer to all acts related to harvested material, including the harvesting itself, or does it only refer to acts that take place after the production of the harvested material, such as possession and distribution?
• Is harvested material obtained “through unauthorized use” of the variety constituents “within the meaning of Article 13 (3) BR when the plants were purchased after the publication of the application, but before the grant of the relevant CPVR”?
First, the CJEU affirmed that plant material which falls under the protection regime must have the capacity for propagation. The Court then concluded that harvested material obtained from plants which were propagated and planted prior to grant of protection, cannot be regarded as harvest having been obtained through the unauthorized use of variety constituents. However, harvest obtained from plants which were propagated and sold without the authorization of the right’s holder after protection has been granted, infringes the rights of the variety holder and thus, is subject to infringement claims by the same.
See here: Judgement of the Court of 19 December 2019 in case C-176/18
Published on 12 May2021
