2016 CIOPORA Guide to Plant Breeders' Rights

Guide To 

Plant Breeders' Rights 

2016 

CIOPORA 

PRESIDENT 

ANDREA 

MANSUINO 

‘Provided that it is 

protected’ 

OVERLY 

STRINGENT 

‘NOVELTY’ 

REQUIREMENT 

Does the U.S. miss 

out on additional new 

varieties developed 

abroad? 

The state of 

breeders' rights 

FloraCulture

Preface 

Provided it is protected 

L 

et 

me first guide you through the history of patent law. The concept of Intellectual Property (IP) was codified for the 

first time in Italy, more precisely by the Venetian Statute of 1474. This statute was the basis for many other attempts 

to acknowledge rights on inventions (i.e. England’s Statute of Monopolies, 1624), but the first formal grant of a 

patent under a modern system occured under the Patent Act of the United States in 1790. Some 140 years later, the first plant 

IP in the world was protected – again in the U.S. – when, in 1930, the American climbing rose variety “New Dawn” was 

patented. 

by Andrea Mansuino 

President, CIOPORA 

In 1961, UPOV (the International Union for the Protection of New Varieties of Plants) was established (the same year in 

which CIOPORA, the International Community of Breeders of Asexually Reproduced Ornamental and Fruit Varieties, 

was founded), with the mission to provide and promote an effective system of plant variety protection and encourage the 

development of new varieties of plants, for the benefit of society. Since the creation of UPOV, this mission has led the 

association’s member states to create and publish international guidelines for the protection of breeders’ rights, the so called 

“UPOV Conventions”, the latest being UPOV 1991. 

In 1994, the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) was signed in the 

framework of the World Trade Organization (WTO), stating that “Members shall provide for the protection of plant varieties 

either by patents or by an effective sui generis system or by any combination thereof”. 

Within the last decade, breeders have begun voicing their dissatisfaction with even the most-recent UPOV Convention 

(which is 25 years old), noting that it does not adequately cover the needs of the changing industry. In Europe especially, the 

option of protecting IP in plants through Patents instead of Plant Breeders’ Rights (PBR) based on UPOV principles is being 

taken into higher consideration, thus stimulating various debates on how IP protection in the plant world should be handled. 

There is little doubt that, if the main meaning of ‘effective’ in English language is ‘achieving the desired result’, no protection 

system in existence today is effective in providing a proper IP environment for breeders, growers and traders to achieve their 

goals in terms of protecting innovation and enforcing their legitimate rights.Moreover, it is extremely difficult to find a system 

which could be called ‘sui generis’ (meaning ‘of its own kind, in a class by itself’) since almost all countries and regions have 

adopted legal IP systems that do not consider the fundamental differences which exist in the plant world. 

Most importantly there is no separation between seed propagated plants and vegetatively propagated plants – for example 

food crops, feed crops and ornamental crops – which have widely different needs in regards to both agronomic methods and 

business scope. History and vague IP protection systems throughout the world considered, the industry today if left with 

multiple options for protectiont Plant IP, and the breeders must choose a method. 

In the U.S., breeders can protect an asexually propagated plant variety through a Plant Patent, a seed variety through a Plant 

Variety Right (PVR), a plant through claims of a Utility Patent, and in some cases such protections can overlap. In the EU, 

breeders can protect their new varieties by PBR protection through the CPVO (European Union Office) or by national PBR 

laws for their specific country. Recently, plant products such as fruits, seeds and parts of plants are patentable in principle 

under the European Patent Convention (EPC) even if they are obtained through essentially biological breeding methods 

involving crossing and selection. Other countries around the world offer similar situations, where in many cases varieties and/ 

or plants can be protected through PBR (UPOV System), Patents or both. In addition, in the plant world, Gene Patents, 

Geographical Indications, Trade Marks, Copyrights, Trade Secrets, and Confidental Information, amongst other legalities, 

can be used to strengthen the IP portfolio of breeders. 

It has been a fundamental question, historically asked during the fights between the American miners unions and mine 

owners at the beginning of the 20 th Century – Which side are you on? It seems that even today, in our industry, a lot of people 

care more about ideological positions than economic implications and fair business policies. 

At CIOPORA we have intense debates about “how to best represent the interests of our members and of our industry” 

whenever we are called to take a position. For our association, each discussion is driven by a single mission – to work for 

an effective system of protection for plant varieties, in order to stimulate innovation, for the economic development of the 

industry and ultimately for the benefit of the society. 

Breeders, but also growers and traders, benefit from effective protection. Innovation and progress can only develop if the 

outcomes of the intellectual efforts are effectively protected. So, in the end, it all comes down to this: Protect your new 

varieties. Consider the many options at your disposal to best protect your innovation. It doesn’t matter if you protect through 

PBR, Patent or another IP tool that can strenghten your Intellectual Property. It will be of the greatest benefit to us all...... 

provided it is protected. 

Andrea Mansuino 

President of CIOPORA 

October 2016 | www.FloraCultureInternational.com 23

In its last three 

Annual General 

Meetings in The 

Hague (2014), 

Hamburg (2015) 

and Lisbon 

(2016) CIOPORA 

has intensively 

discussed and 

approved position 

papers on several 

aspects of Plant 

Breeders´ Rights 

(PBR). The last piece 

of the positions was 

finalized in 2016 

with the Position 

Paper on Essentially 

Derived Varieties 

(EDV). 

by Dr. Edgar Krieger 

Secretary General, CIOPORA 

CIOPORA completes positions 

on Plant Breeders´ Rights 

The new position of CIO- 

PORA on Plant Breeders 

Rights now consists of seven 

chapters: “Scope of the Right”, 

“Minimum Distance”, “Breeders´ 

Exemption”, “Exhaustion”, “General 

PBR Matters” and “Essentially 

Derived Varieties”. Each of the 

positions demonstrates the desire of 

CIOPORA members – breeders of 

vegetatively reproduced ornamental 

and fruit crops – to have more effective 

protection for their innovations 

coupled with clearer regulations. 

Below are the key statements of the 

positions. 

Scope of the Right 

The “scope of the right” is one of 

the most important aspects in IP 

Protection. Which material of the 

variety is protected and which acts 

are reserved exclusively for the 

holder of the right? UPOV does 

not offer a definition of its key term 

“propagating material”, and as a 

result, several different definitions of 

propagating material exist throughout 

the UPOV countries – a material 

in one territory is considered 

to be propagating material while 

in another that same material is 

harvested material. 

A harmonized definition is vital in a 

globalized world; there is confusion 

in international business and 

trade if material changes its status 

depending on the legislation in different 

territories. 

A clarification and extension of the 

protection is in the benefit of the 

entire production and trade chain. 

Clarity is a precondition to establish 

fair competition. Equivocalness is 

used mainly by dishonest players 

who benefit at the cost of the 

honest. Licensees of breeders want 

them to enforce their rights against 

infringers in a robust way, in order 

to establish a level playing field for 

all. Therefore, a sufficiently broad 

scope of protection, covering all 

products of a variety, is necessary. 

This will not change the situation 

for the licensees of the breeders but 

rather enforce the consequences for 

dishonest players. 

Key statements: 

The key statements of CIOPORA´s 

position are: 

• CIOPORA requests UPOV and 

its member countries to harmonize 

the definition of propagating 

material world-wide. 

• Propagating material should 

include any material of a plant 

from which, whether alone or in 

combination with other parts or 

products of that or another plant, 

another plant with the same characteristics 

can be produced. 

• CIOPORA requests the clarification 

that propagating material 

that (in a technical sense), has 

been harvested is considered exclusively 

as propagating material. 

Only material of a variety which 

is not capable, by any means, of 

producing another plant with the 

same characteristics should be 

considered to be harvested material 

in the legal sense. 

• CIOPORA requests that harvested 

material should be protected 

directly and per se. 

• CIOPORA requests that products 

that are obtained directly from 

material of a protected variety 

should be protected directly and 

per se. 

• CIOPORA requests to include 

into the scope of rights the use 

of propagating material for the 

production of harvested material. 

• CIOPORA requests that the 

concept of varieties, which are not 

clearly distinguishable from the 

protected variety, will be restored 

and its meaning be sufficiently 

broadened, by establishing a sufficiently 

broad minimum distance 

between varieties. 

On “Minimum Distance”: 

When is a variety considered to be 

clearly distinguishable or distinct 

from another variety? A sufficiently 

broad minimum distance between 

varieties is one of the most important 

requirements for effective PBR 

protection. Without a sufficient 

distance the exclusive right of the 

holder of a protected variety is 

weakened. If PBR protection is 

granted for other, very similar varieties, 

these other varieties are considered 

to be clearly distinguishable 

from the protected variety and thus 

fall out of the scope of the protection 

of this variety. If a breeder does 

not have exclusivity for his variety, 

he cannot grant exclusivity to his 

propagators or growers. As such, the 

competitors of the propagators or 

growers can produce a very similar 

product. The result is overproduction 

combined with undercutting 

competition. 


• CIOPORA demands a sufficient 

minimum distance between 

varieties for an effective Plant 

Variety Right. 

• Since new varieties are bred, selected 

and introduced mainly for 

commercial targets, the requirement 

“clearly” should be seen 

as a judgmental and evaluative 

requirement, and should not end 

in a simple search of a bot anical 

difference. 

• The requirement “clearly distinguishable” 

should be assessed on 

characteristics important for the 

crop concerned; in this regard 

new important characteristics 

may be taken into consideration. 

• Differences in unimportant characteristics 

only should not lead to 

a clearly distinguishable variety. 

• The relevant authorities should 

have the continuing obligation 

to take into consideration additional 

characteristics proposed 

by applicants, if such additional 

characteristics are important for 

the determination of “clearly 

distinguishable”. 

• In order to be clearly distinguishable, 

the distance between 

24 www.FloraCultureInternational.com | October 2016

Guide To Plant Breeders' Rights 


two varieties in regard to their 

important characteristics must be 

sufficiently broad. 

• The decision on which characteristics 

are relevant for the 

determination of “clearly distinguishable”, 

on how many of such 

characteristics must differ from 

each other and on the distance 

between such characteristics 

should be made on a crop-bycrop 

basis by a panel of experts, 

including representatives of the 

breeders of the crop concerned. 

On “Breeders´ Exemption”: 

CIOPORA supports a breeders´ 

exemption that allows the use of 

commercialized plant material 

of protected varieties for further 

breeding. CIOPORA requests 

that the commercialization of any 

variety, which falls under the scope 

of a protected variety, shall require 

the authorization of the title holder 

of the protected variety. 


• CIOPORA supports a breeders´ 

exemption that contains the use 

of commercialized plant material 

of protected varieties for further 

breeding. 


commercialization of any variety, 

which falls under the scope of a 

protected va kriety, shall require 

the authorization of the title 

holder of the protected variety. 

• The breeders´ exemption should 

read: The breeder’s right shall not 

extend to acts done for the purpose 

of breeding other varieties. 

On “Essentially Derived 

Varieties”: 

The very reason for the introduction 

of the EDV concept in the 

UPOV 1991 Act was to strengthen 

the breeders´ right, particularly by 

creating a balance between biotechnology 

inventors and traditional 

breeders and by bringing mutations 

under the scope of protection of 

their Initial Variety. 

Therefore, CIOPORA maintains 

that mutants and genetically 

modified organisms (GMOs) are 

EDVs, whenever they retain a very 

high genetic conformity to the 

Initial Variety because mutants and 

GMOs per definition are predominantly 

derived from the Initial 

Variety. 

CIOPORA is of the opinion that 

the approach to establish EDV shall 

be based on the genetic conformity 

of the varieties concerned. 

Phenotypic components shall be 

taken into consideration only as far 

as the distinctness of the respective 

varieties is concerned. 

The entanglement of dependency 

and plagiarism – as supported by 

some – is a mistake in the conception 

of the EDV provision. Plagiarism 

is not a question of derivation 

or dependency but rather a question 

of Minimum Distance and direct 

infringement. If a variety in its 

phenotype very much resembles a 

protected variety, it is not clearly 

distinguishable from the protected 

variety, and its commercialization is 

a direct infringement, irrespective 

of whether or not the new variety 

is (essentially) derived from the 

protected variety or not. 

CIOPORA, therefore, is of the 

opinion that close phenotypic similarity 

must not be a precondition 

for a variety to be considered an 

EDV. However, a close phenotypic 

similarity can be an indication for 

essential derivation. 



EDV concept is clarified through 

an objective approach and a clear 

and self-consistent definition, 

which meets the objective to 

balance the scope of new breeding 

techniques and traditional 

breeding. 

• CIOPORA maintains that 

for vegetatively reproduced 

ornamental and fruit varieties 

the EDV concept shall establish 

dependency for varieties, which 

are phenotypically distinct and 

predominantly derived from the 

Initial Variety. 

• The degree of the phenotypic 

similarity and the number of 

phenotypic differences between 

the EDV and the Initial Variety 

shall not be taken into consideration 

for the establishment of dependency, 

but for the assessment 

of distinctness. 

• Predominant derivation is given if material of the Initial 

Variety has been used for the creation of the EDV and a 

very high degree of genetic conformity between the Initial 

Variety and the EDV exists. 

• The methods and required degrees of genetic conformity 

should be established crop-by-crop on the basis of state of 

the art protocols agreed upon by a panel of experts, including 

representatives of the breeders of the crop concerned, 

and has to be proven by the title holder of the Initial Variety 

in case of dispute and litigation. 

• CIOPORA maintains that mutants and GMOs – as far 

as they are distinct from the Initial Variety – are EDVs, 

whenever they retain a very high genetic conformity to the 

Initial Variety as established by the panel of experts, because 

mutants and GMOs per definition are predominantly 

derived from the Initial Variety. 

• CIOPORA maintains that the outcomes of repeated 

back-crossing – as far as they are distinct from the Initial 

Variety – are EDVs in case they retain a very high genetic 

conformity to the Initial Variety as established by the panel 

of experts. 

• CIOPORA recognizes that there is a realistic possibility 

that with advancing technologies it might become possible 

to create independent varieties by new methods, in particular 

genetic engineering. 

On general “Plant Breeders´ 

Rights Matters”: 

This chapter is comprehensive and contains the CIOPORA 

positions on matters such as genera and species to be protected, 

the process of application and granting, conditions for protection 

(e.g. novelty), DUS examinations, ownership of plants, 

DUS reports and DNA samples and analyses, the composition 

and use of variety denominations, compulsory licenses, 

duration and cost of protection, provisional protection and 

enforcement of PBR and its cost. 

CIOPORA, for example, calls for the provisional protection 

to be strengthened. This means that, in order to create a real 

incentive for breeders to launch their innovation at an early 

stage, the breeder of the new variety must be in the position to 

control the exploitation of his variety, i.e. to grant licenses and 

to stop “infringers”, even before the protection title is granted. 

CIOPORA is also of the opinion that the use of the variety 

denomination should be obligatory not only in relation to 

propagating material but also in relation to harvested material. 

For the entire Positions Paper please visit www.ciopora.org ||| 


Plant variety 

protection is 

provided on a 

territory-by-territory 

basis throughout 

much of the world 

to encourage the 

origination of new 

plant varieties 

by rewarding the 

originators of new 

varieties that meet 

certain prerequisites 

with the right to a 

limited exclusivity 

in the new plant 

variety that they 

developed. One such 

prerequisite that 

must be satisfied 

in each country/ 

territory is that the 

variety is ‘new’ or 

‘novel’. However, 

what is meant 

by ‘novel’ is not 

necessarily uniform 

across territories. 

by Travis W. Bliss 

and Benton Duffett 

Buchanan Ingersoll & 

Rooney, P.C. 

Overly stringent ‘novelty’ requirement for U.S. Plant Patents 

Does the U.S. miss out on 

additional new varieties 

developed abroad? 

Because of the territorial nature 

of plant protection, an originator 

of a new variety has 

certain choices to make regarding 

protection of said variety. Is variety 

protection to be sought? If so, 

should the protection be in a single 

country, or should additional countries 

be considered? Making these 

decisions frequently involves an 

analysis of many factors, including 

the type of plant that was developed 

and the climate and cultural habits 

of the country for which protection 

is being considered. 

This decision-making process is 

further complicated by the fact that 

the U.S. applies a novelty standard 

for its Plant Patents that differs from 

– and is much more stringent than 

– the standard applied by much of 

the world. As a result of the differing 

legal standards, it is a distinct 

possibility that the U.S. is actually 

missing out on the introduction of 

some new plant varieties that were 

developed abroad. 

History of plant protection 

in the U.S. 

The United States was the first 

country in the world to provide a 

governmental system to grant exclusivity 

to the originator of a plant 

via the Plant Patent Act of 1930 

(now 35 U.S.C. § 161 et seq.). This 

system grants a U.S. Plant Patent 

to the creator(s) of new vegetatively 

(asexually) reproduced plants. The 

Plant Patent provides the holder 

with an initial period of exclusivity 

(currently 20 years from the application 

submission date), after which 

the exclusivity ends and the plant is 

considered to have passed into the 

public domain. Nearly 27,000 vegetatively 

reproduced plant varieties 

have been protected in the United 

States by this method, to date. 

In 1961, the UPOV International 

Convention encouraged countries 

throughout the world to offer 

protection for new plants, generally 

referred to as Plant Breeders Rights 

(“PBR”). Subsequent amendments, 

including those of 1991, 

have brought further refinements to 

the UPOV Plant Breeders Rights 

system. Seventy-four countries 

have chosen to embrace this treaty, 

including the U.S. To be a member 

of the UPOV, a country must have 

plant variety protection laws that 

meet certain criteria. To meet that 

requirement, the U.S. enacted the 

Plant Variety Protection Act of 

1970, which primarily protects seed 

reproduced plants (7 U.S.C. § 2321- 

2582). As a result, the U.S. now has 

two separate systems for protecting 

new plant varieties: the original 

Plant Patent system and the newer 

Plant Variety Protection (“PVP”) 

system. 

Two different plant protection 

laws 

The existence of these two different 

plant protection laws in the U.S. 

has caused an interesting scenario 

in terms of ‘novelty’ requirements in 

the U.S. While the U.S. Plant Variety 

Protection Act of 1970, directed 

toward seed reproduced plants, 

has adopted the prescribed UPOV 

“novelty” standard, the original U.S. 

Plant Patent system for vegetatively 

reproduced plants has not been 

amended to conform to the UPOV 

definition of ‘novelty’, but rather the 

novelty requirement for U.S. Plant 

Patents remains consistent with that of 

other types of inventions. 

The plant protection system of UPOV 

has recognized that the introduction 

of a new plant variety in various countries/territories 

throughout the world 

commonly requires unique considerations 

unlike those encountered when 

contemplating the introduction of 

non-plant inventions (e.g., machines or 

inanimate products). More specifically, 

the satisfactory functioning of 

a previously unknown plant variety 

under diverse growing environments 

is subject to confirmation through 

time-consuming experimental growing 

at differing locations. Only thereafter 

can an informed decision be made 

concerning where introduction and 

protection of the new plant variety 

should be pursued. Additionally, plant 

quarantine issues additionally influence 

whether a plant variety can be grown 

in another country and under what 

circumstances. The UPOV system 

includes standards, such as the ‘novelty’ 

standard, that take into account these 

special considerations for new plant 

varieties. 

The UPOV ‘novelty’ approach is 

believed to provide a more realistic 

standard for determining when novelty 

is lost once a new plant variety has been 

introduced to the public. Under the 

UPOV rules, for a new variety to be 

‘novel’, the PBR Application must be 

filed less than one year after the variety 

was first “sold or otherwise disposed 

of to others” in the territory where the 

Application for protection is filed and 

must be filed less than four years after 

the variety was first “sold or otherwise 

disposed of to others” elsewhere in the 

world (or 6 years for a tree or vine). 

This is in stark contrast to the novelty 

requirement for a U.S. Plant Patent. 




The one-year window 

The America Invents Act, effective 

March 16, 2013, among 

other things, restates the ‘novelty’ 

requirement for all U.S. Patents, 

including traditional Plant Patents. 

Under this standard, ‘novelty’ is 

now deemed to end in the United 

States when a plant was “on sale, 

or otherwise available to the public 

before the effective filing date” 

anywhere in the world. However, if 

the public availability was less than 

one year prior to the filing date of 

the Plant Patent Application, then 

it will not destroy novelty so long as 

the public availability was the result 

of actions of the breeder/inventor 

(or another who obtained the 

plant directly or indirectly from the 

breeder/inventor). 

Thus, though the novelty standards 

are similar for U.S. Plant Patents 

and UPOV Plant Breeder’s Rights 

with regard to availability of the 

new variety within the territory in 

which protection is being sought, 

they differ greatly with regard to 

public availability outside of the 

territory. 

More specifically, unlike the 

UPOV ‘novelty’ standard of 4 years 

(6 years for trees and vines) for 

availability outside the territory, a 

patentability issue will likely arise 

for a U.S. Plant Patent if there was 

plant availability (sufficient for the 

general public to gain possession of 

the plant) anywhere in the world 

more than one year prior to the 

effective filing date in the United 

States. Plant originators/inventors 

outside the U.S. need to be alert to 

this important precondition – Plant 

Patent protection must be timely 

sought in the United States once a 

new plant is introduced anywhere 

in the world. 

Global harmonization? 

Thus, one is left to reflect on whether 

this issue may be resulting in the 

United States missing out on the introduction of 

additional asexually reproduced plant varieties 

from abroad due to the owners of those new varieties 

being discouraged from entering the U.S. as a 

result of the atypically stringent ‘novelty’ standard 

applied to U.S. Plant Patents. For example, if an 

originator of a new plant variety introduced the 

new variety abroad >1 year earlier, why would he/ 

she then bring that variety into the U.S. when no 

Plant Patent protection can now be obtained? 

This raises the ultimate question: Should the 

traditional Plant Patent law of the United States 

(35 U.S.C. § 161 et seq.) should be modified to 

achieve global harmonization with respect to the 

definitions of plant ‘novelty’? Doing so would 

likely make the current ‘novelty’ standard being 

applied more realistic in view of the unique 

challenges faced by persons developing new 

plant varieties while simultaneously providing 

the U.S. with the benefit of an expanded array 

of recently-created plants. Thus, it seems there 

is a strong argument that an adjustment to the 

novelty standard for U.S. Plant Patents would be 

beneficial for both plant breeders and the public 

as a whole. |||

In the 2014 

CIOPORA Chronicle 

published by 

FloraCulture 

International, the 

author predicted: 

“… the envisaged 

revision of the EU 

trade mark system 

is highly detrimental 

to legal certainty 

and, consequently, 

to the interests of 

breeders and other 

trade mark holders 

alike”. It seems 

that this prediction 

has become reality, 

since the wording 

of the European 

Union Trade Mark 

Regulation (EUTMR) 

and, in particular, 

the current practice 

of the European 

Union Intellectual 

Property Office 

(EUIPO) makes it 

almost impossible to 

predict the outcome 

of a European Union 

trade mark (EUTM) 

application covering 

a broader range 

of species or even 

genera of plants. 

b) The EUTM contains an earlier 

plant variety denomination. 

Whether the application is 

objectionable or not will require 

a more detailed assessment. 

In particular, the Office will 

examine whether the plant variety 

denomination is one of the 

essential elements of the EUTM 

application. Accordingly, the 

trademark application “ANTOby 

Thomas Leidereiter 

Green Rights 

European Union trademarks and variety denominations 

The chaos has arrived 

With good reason, most 

breeders do not only 

assign one name to 

their newly-bred varieties but 

two. First, a variety denomination 

(VD) for the variety is chosen. According 

to Article 20(1)(a) UPOV 

1991 “the variety shall be designated 

by a denomination which 

will be its generic designation”. In 

consequence, the VD is linked to 

the variety in question and eventually 

free for anyone to use once 

the plant variety right (PVR) for 

the variety has lapsed. Secondly, 

an increasing amount of breeding 

companies utilize trademarks to 

further protect the results of their 

breeding efforts. Such trademarks 

might be an individual product 

brand for the variety in question, 

a family brand covering a broader 

range of related products (e.g. the 

Calibrachoa range of a company) 

or an umbrella brand covering 

a whole range of products for 

a common purpose, e.g. for a 

company’s bed & balcony plants 

portfolio. Since trademarks can be 

prolonged for an indefinite period 

of time, and as they are not linked 

to an individual variety, the advantage 

of the combination of the 

two IP systems is obvious. 

Trademarks and VD 

- the legal situation 

before March 23, 2016 

In the past, Article 7(1)(c) 

CTMRR was the most relevant 

provision for the examination 

of Community Trade Mark 

(CTMR) application, which 

referred to live plants, agricultural 

seeds, fresh fruits, fresh vegetables 

or equivalent terms. According 

to said article, trademarks which 

consist “exclusively of signs or 

indications which may serve, 

in trade, to designate the kind” 

were not to be registered. CTMR 

applications consisting of an 

earlier VD were also considered to 

be “devoid of any distinctive character” 

(Art. 7(1)(b) CTMR) and 

sometime also to be “contrary to 

public policy” (Art. 7(1)(g) CTMR 

in connection with Art. 20(1)(a) 

UPOV 1991). The aforesaid provisions 

are still in force today under 

the EUTMR and, thus, relevant 

with regard to denominations of 

non-registered plant varieties and 

also applicable to trade marks that 

have been registered before March 

23, 2016. However, since Art. 7(1) 

(c) CTMR only covers trademarks 

which consist exclusively of an earlier 

VD, their scope of application is 

rather clearly defined. 

Trademarks and VD - the 

new Art. 7 (1) (m) EUTMR 

With the European trademark 

reform Article 7 (1) (m) EUTMR 

was introduced. Today, also the 

following shall not be registered: 

“trademarks which consist of, or reproduce 

in their essential elements, 

an earlier plant variety denomination 

registered in accordance with 

Union legislation or national law, or 

international agreements to which 

the Union or the Member State 

concerned is a party, providing for 

protection of plant variety rights, 

and which are in respect of plant 

varieties of the same or closely related 

species”. What are the changes, 

the new paragraph brings? 

1. Trademarks that consist 

of an earlier VD 

Under the new Article 7(1)(m) 

EUTMR, trademarks which consist 

of an earlier VD that is registered 

as a Community Plant Variety 

Right (CPVR) or nationally shall 

not be registered if the application 

covers plant varieties of the same or 

closely related species; this is simple. 

In addition, the EUIPO decided 

that Article 7(1)(m) EUTMR also 

refers to VDs of varieties that have 

been, but are no longer, registered. 

According to section 2.13.3.2 of 

the Guidelines for Examinations 

of European Trademarks, “Article 

7(1)(m) EUTMR applies only in 

respect of plant variety denominations 

that were registered […] or 

had expired or been surrendered or 

terminated at the time when the 

EUTM application was examined”; 

simple again. 

2. Trademarks that reproduce 

in their essential elements 

an earlier VD 

The actually problem results from 

the second alternative of Article 7(1) 

(m) EUTMR, pursuant to which 

trademarks that “reproduce in their 

essential elements” are affected 

by an earlier VD. The concept of 

“essential elements” of a trade mark 

is new to the European trademark 

regime, and the definition of the 

concept is anything but clear. 

3. Examples 

According to the Guidelines, under 

Art. 7(1)(m) EUTMR the following 

situations may arise: 

a) The EUTM applied for consists 

of an earlier plant variety 

denomination, for example the 

word mark ‘ANTONIO’ for 

fruits and vegetables. Since 

‘ANTONIO’ is an earlier plant 

variety denomination for peppers, 

the Office will object with 

regard to peppers. 




NIO MARIN VEGETABLES” 

for “fruits and vegetables” would 

be refused. On the other hand, the 

trade mark could be registered for 

“fruits and vegetables” since AN- 

TONIO is not considered to be an 

essential element of the trade mark 

according to the guidelines. 

Even more puzzling and is the 

following rule provided for in the 

Guidelines: 

“… when more than one plant 

variety denomination appear as an 

essential element in a trademark application, 

for example a plant variety 

denomination for ‘apples’ and another 

one for ‘strawberries’, the list of 

goods will have to be limited in order 

to exclude the goods covered by each 

plant variety denomination, that is to 

say, apples and strawberries. This also 

applies where the two plant variety 

denominations are joined in the same 

term, for example MARINEGOLD, 

where both MARINE and GOLD 

are protected; the list of goods will 

have to be limited in order to exclude 

the goods covered by each plant 

variety denomination”. 

Various EUTM applications covering 

“natural plants” have already been 

objected to by the EUIPO, e.g. “Ice 

N’ Roses” or “Summer of Love” since 

“Ice”, “Rose”, “Summer”, and “Love” 

are registered VDs for different 

species. 

4. The consequences 

With regard to a product brand, 

i.e. a trademark that shall serve to 

designate only an individual variety 

of a company, the consequences are 

limited. The list of goods can be 

narrowed down to the species of the 

variety in question and, thereby, most 

other species are excluded as possible 

sources for conflicting VDs. 

If, however, the trademark shall function 

as an umbrella brand and, thus, 

needs to cover goods such as “ornamental 

plants”, “fruits”, “vegetables” 

or the like, the problem is obvious. 

Suddenly, all kinds of variety denominations 

become relevant even if 

the denomination in question is only 

one part of the trademark elements 

– as shown best by the example of 

“ANTONIO MARIN VEGETA- 

BLES”. Although ANTONIO is 

only one element of the application, 

the EUIPO would not allow an 

unlimited trade mark because of the 

earlier VD “ANTONIO”. 

And finally, how would the EUIPO 

handle a EUTM application “RICE” 

daszxfwesdfPorro 

doluptata 

nonet restest, 

tem eicae 

eumquodipid 

quiatio 

ipsuntem ea 

volendunt 

covering “natural plants and flowers”? 

The term “RICE” is not a registered 

VD according to the CPVO Variety 

Finder. However, “ICE” is a VD 

for varieties of Oryza sativa L. and 

Medinilla Gaudich. Since “RICE” 

does contain in its essential elements 

the term “ICE”, would the application 

have to be opposed to and eventually 

limited? 

Conclusions 

First of all, it seems that the end of 

“speaking denominations” has arrived, 

since such VDs will inevitably block 

countless trademarks literally forever. 

Once registered on the UPOV level, 

the VD can no longer be used as – 

and, more importantly, as an essential 

element of – a trademark, even if the 

PVR has lapsed. Any investments in 

such a name are in vain. Thus, only 

coded VD should be used in the 

future. Most importantly, all breeder 

associations should quickly react and 

advocate a revision of Art. 7(1)(m) 

EUTMR. The phrase “or reproduce in 

their essential ele-ments” needs to be 

eliminated from the current provision 

as its scope seems almost indefinite. 

In any event, choosing the right trade 

mark in the plant sector has become a 

challenging task. ||| 


The Nagoya 

Protocol, signed in 

2010, aims to ensure 

that the country of 

origin of the planet’s 

genetic resources, 

gets a fair share 

of the benefits of 

that resource when 

it is researched or 

developed. This 

article provides a 

description of the 

current state of 

the international 

protection of 

genetic resources. 

by Philippe de Jong 

ALTIUS 

Update on the Nagoya 

Protocol and its EU 

implementation 

Let’s start with some background. 

In 1992, a specific 

convention on biodiversity, 

called the Convention on Biological 

Diversity (CBD), was adopted. 

The CBD’s main objectives were to 

ensure that (i) the planet’s genetic 

resources (i.e. essentially all natural 

biological material, including material 

of plant origin) remained sufficiently 

conserved, (ii) they would 

be used in a sustainable manner, 

and (iii) the benefits arising out of 

their utilisation would be fairly and 

equitably shared with the countries 

providing those genetic resources. 

To achieve those objectives, the 

CBD legally enshrined the principle 

that Parties to the CBD have sovereign 

rights over their own natural 

resources. 

The CBD also recognized the 

importance of traditional knowledge 

associated with such genetic 

resources. 

Lengthy process 

A lengthy process of further discussions 

then followed on how the 

CBD could be given more power, 

eventually led to the adoption, 

on 30 October 2010, of a supplementary 

agreement to the CBD, 

the Nagoya Protocol on Access to 

Genetic Resources and the Fair and 

Equitable Sharing of Benefits Arising 

from their Utilisation (Nagoya 

Protocol). 

Under the Nagoya Protocol, which 

particularly seeks to strengthen 

the third objective of the CBD (i.e. 

the fair and equitable sharing of 

benefits arising from the utilisation 

of genetic resources), Parties can 

implement rules on access to genetic 

resources and on the sharing of 

benefits arising out of their utiliza- 

tion. Access is regulated by means 

of a requirement for prospective 

users of genetic resources to obtain 

prior informed consent (PIC) from 

the competent national authority, 

whereas benefit sharing is regulated 

through private law contracts between 

the user and the country of 

origin, referred to “mutually agreed 

terms” or “MAT”. 

Finally, the Nagoya Protocol urges 

its members to implement a system 

of checks to make sure that the 

local rules on access and benefit 

sharing have been complied with. 

The Nagoya Protocol entered into 

force on October 12 th 2014. In the 

meantime, 80 Nagoya Protocol 

Parties have ratified the Protocol, 

the most recent ratifications emanating 

from Belgium (on August 

9 th 2016) and Bulgaria (on August 

11 th 2016). According to the CBD 

website, the goal is to reach 100 

ratifications by the time the second 

Conference of the Parties (COP) to 

the Nagoya Protocol is held in December 

2016 in Cancun, Mexico. 

In the European Union (EU), 

the development of access and 

benefit-sharing rules has been left 

to the Member States. Pursuant 

to the rules of the CBD, they have 

sovereign rights over their respective 

genetic resources. 

The EU, however, has implemented 

the compliance pillar of the Nagoya 

Protocol. To do so in a harmonised 

manner, it has developed a specific 

Regulation in that regard, officially 

called “Regulation 511/2014/EU 

of the European Parliament and 

the Council of 16 April 2014 on 

compliance measures for users from 

the Nagoya Protocol on Access to 

Genetic Resources and the Fair 

and Equitable Sharing of Benefits 

Arising from their Utilisation in the 

Union” (the Basic Regulation). 

The Basic Regulation has been 

complemented with an Implementing 

Regulation. In addition to those 

two legislative instruments, the 

European Commission, in August 

2016, also adopted a non-binding 

horizontal guidance document 

further explaining the scope and 

the core obligations under the 

Basic Regulation (the Horizontal 

Guidance). Finally, seven vertical 

guidance documents are being 

prepared on the notion of ‘utilization’ 

per sector affected by this new 

legislation (the Vertical Guidance), 

including one for the plant breeding 

sector. 

Horizontal and Vertical 

Guidance 

CIOPORA has actively participated 

in the stakeholder meetings 

that were held in preparation of 

the Horizontal Guidance. It is 

furthermore represented by three 

delegates, including myself, in the 

expert group assigned with the 

development of a draft Vertical 

Guidance document. Although 

CIOPORA supports all three objectives 

of the CBD, including the 

need for benefits arising out of the 

use by private entities of a country’s 

natural resources to be somehow 

shared with that country, it is also 

wary that an overly broad interpretation 

of some of the key terms in 

the Nagoya Protocol and the EU 

implementing rules on compliance 

does not hamper innovation in the 

ornamental plant breeding sector. 

This concern applies in particular 

to the notions of ‘genetic resources’ 

and the ‘utilisation’ thereof. 

Since the guidance given in respect 

of these terms in the Horizontal 




Guidance is still somewhat ambiguous, 

CIOPORA continues to support a practical 

and feasible interpretation of these 

terms in the Vertical Guidance, which 

it believes to also be in line with both 

the text and the spirit of the Nagoya 

Protocol. 

Breeder’s exemption 

In respect of the type of genetic 

resources covered by the obligations 

of the Nagoya Protocol and the EU 

compliance rules, CIOPORA has, 

supported by many other stakeholders, 

taken the view that this should not relate 

to commercially available material of 

cultivated plant varieties, since these are 

not natural resources over which Nagoya 

Protocol Parties can exercise sovereign 

rights. 

At the very least, the EU compliance 

rules should not impose due diligence 

obligations in respect of a third country’s 

access and benefit sharing legislation 

claiming sovereign rights over commercial 

varieties, as this would neither be 

appropriate or proportionate, as required 

by the Nagoya Protocol. Having the due 

diligence obligation apply to commercial 

varieties used as starting material in a 

breeding process would, in the opinion 

of CIOPORA, furthermore run counter 

with the breeder’s exemption under plant 

variety rights law, although this latter 

concern is not shared by the Commission 

in the Horizontal Guidance. 

Clearly, a Nagoya Protocol Party can 

impose benefit sharing obligations in 

respect of commercial varieties developed 

through the use of an accessed 

natural resource in the MAT concluded 

with the prospective user. However, 

such obligations are part of the private 

contractual relationship between the 

provider country and the prospective 

user. It is not a matter to be checked by 

the competent national authorities under 

the due diligence obligations of the EU 

compliance rules, which are limited to a 

formal check of the existence of PIC and 

MAT, and do not provide for means to 

enforce their content. 

In respect of the type of activities that 

amount to utilisation, which is defined 

in both the Nagoya Protocol and the EU 

compliance rules as ‘to conduct research 

and development on the genetic and/ 

or biochemical composition of genetic 

resources, including through the application 

of biotechnology …’, it is the 

position of CIOPORA that this is only 

the case for activities that involve both 

research and development, i.e. activities 

of experimental development. Activities 

consisting of the screening of biological 

material in the wild or in genebanks 

The Nagoya 

Protocol sets 

targets to 

protect the 

natural environment 

and 

its endangered 

species and 

habitats. 

to find interesting traits, assessing a 

material’s breeding value or the use of 

pathogens to find resistance genes, are 

not and should not be covered by that 

notion. 

Workshop Brussels 

CIOPORA's representatives will continue 

to defend this position and have 

most recently done so during a workshop 

on the draft Vertical Guidance 

which 

was held at the European Commission 

in Brussels on September 20 th 2016. The 

discussion with the Commission was 

constructive and, in addition to the 

above point, CIOPORA emphasised 

that consistency is needed between the 

various sectoral guidance documents. 

However, it is eventually up to the 

Commission to decide on the content of 

the Vertical Guidance, which is said 

to be due by the end of 2016. Given the 

uncertainty surrounding these and 

other issues, however, it is possible that 

that timeline is further 

extended. And it is also expected that 

some of them will be addressed during 

the second COP in Mexico in December 

2016. Reports on these developments 

will be provided in the periodical 

updates in the CIOPORA newsletter. ||| 


Hardy fern program 

Vitro plug 126 

already 30 Varieties - 

fast growing assortment 

ellen@vitroplus.nl 

+31 111 468 088 

www.vitroplus.nl 

www.facebook.comVitroPlusBV

The aim of Plant 

Breeders’ Rights 

(PBR) – or any 

system of IP – is to 

serve as a tool to 

stimulate invention, 

as breeding and 

inventing benefit the 

progress of mankind 

and society. For 

entrepreneurs and 

inventors of plants 

or otherwise, strong 

IP regulations are 

indispensable and 

essential. 

by Mia Buma 

Intellectual Property 

Systems: a tool, not a goal 

In horticulture, PBR and other IP 

rights are the bread and butter 

interest for the breeder, and an 

interest that concerns the entire 

industry chain. Because of this, it 

is vital to safeguard the separate IP 

systems. However, all concerned 

parties in the supply chain have 

failed to do so adequately…together, 

we need to take action. 

To save and improve 

the PBR System 

As the horticulture industry, we 

have not maintained our PBR 

system well enough and or prepared 

it for new developments. Why, for 

example, is the patent system now 

seen as a threat for the sector? Because 

our industry did not succeed 

in solving the weak points in the 

PBR system. 

UPOV, the International Convention 

for the Protection of New Varieties 

of Plants, has not been updated 

since 1991; at that time there were a 

limited amount of UPOV member 

countries compared to today, there 

were hardly any genetically modified 

organisms (GMOs), and we 

weren’t yet living in a digital world. 

Now consider that issues like minimum 

distance, essentially derived 

varieties (EDVs) and the development 

of patents are used more often 

in the sector. If we do not succeed 

in solving our own problems with 

the PBR system, it will very likely 

be taken over by other systems in 

the future. 

Minimum Distances 

In Spring 2016, CIOPORA and 

AIPH gave a joint presentation at 

the UPOV meetings in Geneva 

to ask again for their attention on 

the matter of minimum distance 

between varieties, meaning how 

different varieties must be in order 

to be granted separate PBR protection 

and to fall out of the scope 

A ‘clear difference’ in today’s practice can be seen in the picture: one variety has 

red; the other variety has green pedicels. Obviously, the difference is ‘clear’ in the 

sense that it can be seen - from underneath the plants. Still, the question is whether 

breeders want candidate varieties to be granted CPVR protection on the basis of 

such small differences. 

of an earlier protected variety. 

Minimum distance is one of the 

cornerstone concepts of the UPOV 

PBR System, and has been a highly 

controversial issue since the beginning 

of the convention. 

The ornamental industry urgently 

needs progress in this matter in 

order to achieve a broader distance 

between protected varieties. Horticultural 

breeders and growers need 

to distinguish themselves with their 

products on the market in order 

to gain return on their investment, 

and breeders in particular to 

benefit from protection titles that 

give them stronger and better 

enforceable rights. As Thomas 

Leidereiter wrote in the 2013 

CIOPORA Chronicle (page 

40): 

“Each new candidate variety 

should literally be “new”, to be 

able to get a reasonable share in 

the market or to even develop 

its own market. This means the 

candidate should be ‘sufficiently’ 

unique or ‘original’ compared to 

the varieties already available on 

the market.” He hit the nail on 

its head by continuing, “PBR, 

as an IP right, constitutes a legal 




title. While botanists, of course, are 

called in to explain the differences 

which can be found between two 

varieties, it is a legal task to define 

the minimal distances between 

varieties. Eventually, it is a political 

issue.” 

Bandwidth 

The sector should focus on this 

important discussion concerning 

the distances between varieties 

and not on developing morecomplicated 

explanations of the 

articles of EDV in the UPOV 1991 

Convention. The essence of the 

discussion should be: Is there a new 

variety -yes or no? If one can live 

with a certain bandwidth between 

varieties (which should be possible 

at least in ornamentals), the issue 

of EDV could be solved in a less 

complicated and more juridical and 

clear way. Criteria for acceptance of 

and agreement on distances must 

be created. UPOV should continue 

to formulate and describe the relevant 

characteristics for important 

varieties as was started before the 

introduction of the 1991 Convention, 

with the goal to help decide 

if the criteria for distinctness were 

reached. 

In terms of characteristics, it has 

been decided that important aspects 

are: Illness resistance is more 

important for some varieties than 

for others, think of vegetables; For 

ornamentals the color of the flower 

is more important than the stand 

of the leave; How important is the 

new characteristic for the commercial 

horticultural sector?; How 

important is the new characteristic 

compared with other relevant 

characteristics? 

Furthermore, we must bear in mind 

that this 'minimum distances' question 

has to be answered in the light 

of the legal basis of the breeder right 

system, namely that breeding of 

new plant varieties benefits the progress of 

mankind and society. In short, the width 

of a variety will have to be determined 

individually on the basis of important variety 

characteristics (main characteristics). 

The establishment of common guidelines 

in this regard has already agreed upon in 

the conferences to the UPOV '91 Convention, 

but unfortunately – as mentioned 

above – has not been addressed further by 

UPOV since. 

Action is needed 

The urge to keep the UPOV system 

strong, clear and workable is larger than 

ever before. For all persons who are 

involved in breeders’ right professionally 

(UPOV, CPVO and on national controlling 

board levels), the biggest challenge is 

to ensure that a balance between the PBR 

and the other IP systems will be created. 

From perspective this improved PBR 

system is an essential condition to restore 

its position. |||

2016 CIOPORA Guide to Plant Breeders' Rights

Create successful ePaper yourself

Delete template?

Save as template?