enforcement of pvrs in the ornamental sector

Enforcement of PVRs in the Ornamental Sector

Forum Conference on IP Protection for Plant Innovation Amsterdam, 18 April 2008

TJEERD F.W. OVERDIJKAttorney-at-law

Vondst Advocaten

Outline

Enforcement regimes: EU and national Pre-trial actions; interim relief; Compensation of damages; recovery of costs; Cross-border issues

Enforcement rules – relevant levels

CPVR; Anti-Piracy Regulation (EU 1383/2003); Enforcement Directive National Plant Variety Acts;

Enforcement rules CPVR

Articles 94 – 107; 94 : enjoin infringement and/or

compensation; 95 : before grant: reasonable compensation; 97 : restitution of gain under national laws; 103: procedure: rules of relevant state; 107: ‘penalties’: rules for corresponding

national rights.

Enforcement rules – national level

Injunction (temporary measures); Forms of seizure;

‘regular’ ‘conservatory’ seizure New: seizure for preserving means of proof New: Descriptive seizure; New: Sequestration of samples

New: ex parte court order;

Enforcement rules – national level Compensation of damages – surrender of profits; Accounting and other information; Fixation of estimated damages; Full recovery of legal fees; Surrender/destruction of infringing material; Services of intermediaries; Posting bond; Publication of judgment. National rules provide more remedies than CPVR!

Anti-Piracy Regulation

Actions against imports; exports; re-export (includes ‘transit goods’);

Simplified procedure for destruction; Taking of samples by customs; Customs take care of the job; but: thorough preparation remains essential.

Proof of infringement

Statements of witness / declaration of bailiff; Physical proof / documents; Auction statistics; Accounts of certification institutes; Experts; Research labs / -agencies;

DNA analysis:

AFLP Dendrogram:

Exclusive right; scope of protection

Protection is basically for propagating material (reproduction and trading);

Extension 1: variety constituents or harvested material (13-2,3 CPVR);

Extension 2: EDVs; varieties not distinct and hybrids (13-5 CPVR).

14-2 UPOV; 13-2,3 CPVR

Protection of harvested material only: if obtained through unauthorized use of

variety constituents; and unless holder has had a reasonable

opportunity to exercise his right.

Unauthorized use

Authorization of breeders required for acts in respect of harvested material obtained through unauthorized use of propagating material of the protected variety;

Relevant whether or not variety protected in territory where unauthorized use took place?

Does breach of licence agreement constitute unauthorized use? -> Art. 27-2 CPVR!

4 unauthorized situations:

Existence of valid PVR: No licence has been granted; Breach of licence agreement;

No valid PVR in country of origin: Material has been obtained under contractual

restrictions; No contractual restrictions apply.

Reasonable opportunity

With regard to variety constituents / propagating material;

What if no right in country of origin? What if right exists in country of origin? What is reasonable? What is exercise? Duty to litigate?

Exhaustion of PVR under CPVR: PVR is exhausted when: Material of protected variety has been sold or

marketed by breeder or with his consent; But NOT in case: Material has been used for further propagation; export into country which does not protect varieties of

the plant genus or species to which the variety belongs;

Except when further propagation is intended or export is for purpose of final consumption.

Case 1:

Breeder B in DE has EU PBR; B sells pm to propagator P in GR; P has prop licence from B; P sells cuttings to grower G in TU; B has no protection in TU; G exports cut flowers to importer I in NL; Importer I sells at auction in NL.

Case 2:

Breeder B in DE has EU PBR; B sells pm to propagator P in GR; P has prop licence from B and licence to sell

in EU; P sells cuttings to grower G in ET; G exports cut flowers to importer I in NL; Importer I sells at auction in NL.

Case 3:

Breeder B in DE has EU PBR; B sells cuttings to grower G in TU; Contract says: only grow and sell in TU; B has no protection in TU; G reproduces and exports cut flowers to

supermarket in UK.

Case 4:

Breeder B in US has EU + IL PBR; B sells cuttings to grower G in IL; G does not pay royalties due; G and exports cut flowers to NL and sells at

auction.

Case 5:

Breeder B in US has EU PBR; B sells cuttings to grower G in IL; Contract says: only grow in IL and sell in EU

+ IL; G does not pay royalties due; G and sells cut flowers to importer I in NL; I sells at auction in NL.

Case 6:

Breeder B in US has EU PBR; B sells cuttings to grower G in ET; B has no PVR in ET; G should not reproduce but can sell

anywhere; G does not pay royalties due; G and sells cut flowers to importer I in NL; I sells at auction in NL.

Case 7:

Breeder B in DE has DE PBR for pot plant; B sells cuttings to grower G in DE; G sells cuttings to P in FR who reproduces

them and grows plants in FR; B has no PVR in FR; P sells plants to importer I in DE; I resells plants to customer C in DE .

Case 8: Breeder B in NL has EU PBR; B sells bulbs to trader T in NL; Contract says: only sell to growers who agree:

only to grow plants and not reproduce and agree to grow; and only to sell to customers who assume same obligation no

reproduction; T sells bulbs to propagator P in CL, who has no

licence; B has no title in CL; P reproduces and exports plants to supermarket in UK.

Conclusions:

Means for enforcement of PVRs have improved substantially during recent years;

Protection against harvested material from countries where variety is not protected is unclear.

Contact details:

tjeerd.overdijk@vondst-law.com

+31(0)20 504 2000