The Plaintiff, being the owner of a Community plant variety right for the “Lemon Symphony” variety of the Osteospermum ecklonis species, accused the Defendant of infringing upon its rights in “Lemon Symphony” by distributing cap marguerite seedlings under the variety denomination “Sumost 01” (brand name “Summer daisy’s Alexander”). In 2001 grant of Community plant variety protection for this variety was applied for under the denomination “SUMOST 01”. At the time of the appeal decision, no final decision had been issued in relation to the application for plant variety protection. However, in 2003 the Bundessortenamt (the German authority for plant variety protection), that had been entrusted with the technical examination by the CPVO, reached in an interim report, that had been drawn up in consideration of material dealt with as being part of the Plaintiff’s variety, the conclusion that “SUMOST 01” had not been sufficiently distinct from the “Lemon Symphony” variety in the 2003 examination period.
Both the Regional Court and the Higher Regional Court of Düsseldorf granted the action and confirmed that the “Sumost 01” “variety” infringes upon the rights in the “Lemon Symphony” variety. The Defendant filed an appeal on a point of law directed against the Higher Regional Court of Düsseldorf’s decision with the Federal Supreme Court. On 14 September 2005, that is to say, after announcement of the appeal decision, the CPVO adapted the original variety description of the Plaintiff’s variety to reflect the result of the technical post-examination and a variety description based thereupon, a possibility which is provided for in Art. 87 para. 4 of the Regulation on Community Plant Variety Rights. The appeal filed thereagainst by the breeder of the “Sumost 01” variety was rejected by the Appeal Board of the CPVO. The action lodged with the Court of First Instance of the European Communities against the rejection has not been decided upon yet.
As “Sumost 01” was obviously identical with “Lemon Symphony”, the breeder of the “Sumost 01” variety filed the request in 2004 that the protection granted to the “Lemon Symphony” variety be annulled on the ground that since 2001 it has not corresponded with the phenotype determined in the course of the register examination in 1997. The Office rejected such request. The appeal filed by the breeder of the “Sumost 01” variety was dismissed by the Board of Appeal of the CPVO; the action lodged with the Court of First Instance in that regard has not been decided yet either. In 2007 the breeder of the “Sumost 01” variety further requested that the Community plant variety right for the Plaintiff’s variety be declared invalid. Equally, the rejection by the Office was appealed. However, the Board of Appeal also rejected the appeal raised thereagainst.
The Decision of the Higher Regional Court
The Higher Regional Court of Düsseldorf had given the following reasoning in its decision: It confirmed that the Regional Court correctly assumed that the scope of protection of a protected variety is determined by the combination of the expression of its characteristics as specified in the granting decision. Further, in addition to identity, the scope of a protected variety encompasses a scope of tolerance which has to be expected with regard to the species at issue. For determination purposes, the Court of Appeal agreed that a comparison cultivation is often required as was performed by the expert appointed by the Higher Regional Court. The variety description of 16 October 1997 of “Lemon Symphony” which continued being valid at the time of the oral hearing, formed the starting point of the assessment based on the results of this cultivation. The new variety description dated 14 September 2005 was, however, not entirely of no relevance since the differences in both descriptions primarily arose from an amendment of the examination guidelines and the circumstance that, in the interim, additional varieties were available for comparison purposes. Based on the results of the taking of evidence, the Appeal Court – like the High Regional Court – was convinced that the Defendant’s variety underlying a 2003 to 2005 cultivation and the 2005 variety description of “Lemon Symphony” identically concur with the Plaintiff’s variety. Accordingly, the Court of Appeal confirmed the Higher Regional Court’s conclusion that the attacked plant material identically concurs in all characteristics of the protected variety based on the results of the comparison cultivation. Colour deviations in certain characteristics were regarded as so marginal that they could have been expected, thus, lying within the scope of tolerance of the Plaintiff’s variety. Also, the Court of Appeal was of the opinion that the differences in one of the quantitative characteristics were within the variations to be expected and did not allow to recognise a significant difference between the Plaintiff’s variety and the attacked plants.
The Decision of the Federal Supreme Court
The Federal Supreme Court confirmed that the scope of protection of the protected variety, does not only cover identical plants, but plants of the same species with deviating characteristics which, however, fall into the scope of tolerance of certain variations to be expected. The Federal Supreme Court emphasised this correct consideration which so far was not finally acknowledged in the case law of the German Federal Supreme Court (cf. BGHZ 166, 203, 209 et seq. – Melanie), but was concurrent with established case law of lower instance courts (cf. Higher Regional Court of Frankfurt, comm. 1982, 212, 213; Higher Regional Court of Düsseldorf InstGE 4, 127, 134 = GRUR-RR 2004, 281) and with the unanimous view held in German literature (cf. Wuesthoff/Leßmann/Würtenberger, Handbuch zum deutschen und europäischen Sortenschutzrecht, Weinheim, 1999, margin note 306: “Equivalence region of a plant variety right; individualised scope of protection”; Keukenschrijver, German Plant Variety Act, 2001, margin note 48 in relation to § 10; Jestaedt, GRUR 1982, 595, 598). Such is not only applicable to the national plant variety protection pursuant to § 10 German Plant Variety Act but also to the Community plant variety protection as per Art. 13 CPVR, from which the national law does not differ in that regard. Correctly, the Higher Regional Court relied on the fact that plant variety protection concerns living matter the concrete expression of which depends on various factors such as the cultivation of the mother plant, quality of the used cuttings, pruning date, utilisation of fungicides and insecticides, substratum, quantity of manuring and water, temperature and light exposure. This is justification for acknowledging a scope of tolerance in addition to identity. The Federal Supreme Court was convinced that this issue of interpretation was to be unambiguously answered as well with regard to the Community plant variety protection with the effect that no preliminary ruling by the Court of Justice of the European Communities need to be obtained (cf. ECJ 1982, 3415 = NJW 1983, 1257 – C.I.L.F.I.T.).
Since the Defendant had challenged the adaptation of the “Lemon Symphony” variety description as well as validity of the Plaintiff’s protective right, the Defendant requested in the proceedings on the appeal on a point of law that the same be suspended until the conclusion of these further pending proceedings and the rendering of final decisions on the validity of the Community plant variety “Lemon Symphony” and the adaptation of the Plaintiff’s variety. In this regard, the German Federal Supreme Court set forth that the infringement court is bound by the grant of protection of the Community plant variety right (Art. 105 CPVR; cf. Würtenberger/van der Kooij/Kiewiet/Ekvad, European Community Plant Variety Protection, 2006, margin note 7.09). The Federal Supreme Court admitted that it may suspend the proceedings and await the conclusion of another legal dispute if its own decision completely or partially depends on the existence or non-existence of a legal position which is subject to another pending legal dispute. Art. 106 para. 2 CPVR expressly provides therefor in case of pending proceedings with the objective of a declaration of nullity of the Plaintiff’s variety pursuant to Art. 20 CPVR or the cancellation of the Community plant variety right protection pursuant to Art. 21 CPVR.
A suspension in consideration of the action lodged against the adaptation of the variety description was, in the opinion of the Federal Supreme Court, not required in this case since the decision on the present legal dispute did not depend thereon. The Appeal Court committed no legal error in finding that the adapted variety description may be drawn upon in order to assess the expression of the characteristics decisive according to the original variety description in light of the UPOV Directive TG/176/3, thus only “translating” the same in order to allow a comparison of the expressions of the attacked plant material as cultivated in 2003 and 2004 with the Plaintiff’s variety and the plants of the Plaintiff’s variety cultivated in the same years. The basic principle as alleged in the appeal of a point of law that in the infringement proceedings one was not allowed to deviate from the variety description in the granting decision, can neither be taken from case law nor literature, bearing in mind the relevance afforded to it; particularly, the sources cited in the appeal on a point of law (BGHZ 166, 203, 208 et seq. – Melanie; Keukenschrijver, in the place cited, margin note 46 ad § 10) do not support such principle. Neither was there a justification for it. The Federal Supreme Court admitted that, while the infringement court is bound by the granting decision, it was not hindered thereby to determine the content and scope of the plant variety right on its own authority, like in cases of any other intellectual property right. Rather, the infringement court is under the obligation to seek clarity how the expressions of the characteristics specified in the granting decision can be determined under the climatic and other conditions at the time of clarification of the matter with a certainty sufficient for the Judge’s shaping of opinion. Nothing else has been done by the Appeal Court.
“Complexity of the protective right position” as worried about in the appeal on a point of law could not be used for arguing against this authority of the infringement court. The adaptation of the official variety description pursuant to Art. 87 para. 4 CPVR did not re-define the variety’s scope of protection. Rather, it was meant to provide for better comparability and, thus, had a clarifying function. Therefore, the infringement assessment was to be based on it “retrospectively” as well as on the techniques deemed necessary by the infringement court in order to see for itself the distinctness or non-distinctness of the attacked plant material from the protected variety.
Equally, the stay of the proceedings because of the nullity and cancellation proceedings initiated by the breeder of “Sumost 01” was rejected by the Court. It pointed out that the suspension of the infringement case is up to the Court’s discretion in accordance with Art. 106 para. 2 CPVR as well as § 148 of the German Civil Procedure Act and, even if more generous standards need to be applied in proceedings on an appeal of a point of law or on the leave to appeal on a point of law (BGHZ 158, 372, 376 – Druckmaschinentemperierungssystem), is only necessary if it is established that there is at least some prospect of success in the request for declaration of nullity or cancellation.
The Supreme Court denied such circumstances to be given. Such was not true with regard to the request for declaration of cancellation of “Lemon Symphony”. It is not set forth in the substantiation of the appeal on a point of law on what basis the action brought to the Court of First Instance has been substantiated and because of which circumstances it may be expected with some likelihood that the Court will rule that the uniformity and stability requirements as laid down in Art. 8 or Art. 9 CPVR are no longer satisfied by “Lemon Symphony”. Such presentation cannot be compensated by the fact that the claims in that action which the breeder of the “Sumost 01” variety has been asserting, are briefly outlined in the official Gazette of the European Union.
The same was the case with regard to the request for declaration of nullity of the Community plant variety protection. For it to succeed, it was required that it was established that one of the nullity reasons as laid down in Art. 20 CPVR was given. However, no argument of the Appellant was set forth what circumstances are meant to render such a finding of facts likely. Neither with regard to the discussed treatment of the examination material with a growth regulator in 1997 nor as regards the examination which, according to the Appeal Board’s decision, is common practice based on cuttings which have been obtained from the plant material made available to the examining office was it set forth which concrete facts were meant to justify the conclusion that the characteristics to be taken from the variety description do not result from the genotype of the protected variety. Therefore, it may remain unsettled whether, due to the rejection of the appeal alone, the courts dealing with the infringement issue are bound by the rejection of the request for declaration of nullity as long as an action may be lodged against the decision of the Appeal Board within the two-month term pursuant to Art. 73 para. 5 CPVR, an action which, however, is not afforded a delaying effect as per European law related provisions (Art. 242 EC).
Published on 30 May 2010