2012 CIOPORA Chronicle

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Law case On 20 October 2011 the Court of Justice of the European Union (CJEU) rendered its judgment in the so called “Greenstar- Kanzi Case” 2 strengthening the position of a licensor of a Community Plant Variety Right (CPVR). A decision to the benefit of European title holders What are the facts? The story of the case 3 is quickly told: The case is dealing with the apple variety ‘Nicoter’ (CPVR application filed in 2001). In December 2004, the licensee in ‘Nicoter’ (Nicolaï) sold 7,000 trees of the variety to Mr Hustin. Although the license agreement provided that Nicolaï may not sell trees to any third party without such party having signed an own license agreement, the trees were sold with no such agreement in place. Eventually Greenstar-Kanzi Europe NV (GKE) became the licensee of ‘Nicoter’ and, after the CPVR was granted in August 2005, GKE discovered that ‘Nicoter’ apples were sold by Mr Goossens who had bought them from Mr Hustin. GKE filed an action against Mr Hustin and Mr Goossens in Belgium claiming that the sale of the apples constituted a CPVR infringement. by Thomas Leidereiter 1 The questions of law The Belgian Hof van Cassatie asked the CJEU to give a preliminary ruling on the following questions: (1) Can the holder of a CPVR or his licensee bring an action against anybody exploiting the protected variety if the plant material this person is exploiting was bought from a licensee breaching his license agreement at the time of the sale? (2) Is it, in this case, relevant whether the person buying such material knows about the limitations contained in the license agreement? The decision On the first question, the CJEU held that it may constitute a CPVR infringement if a licensee is in breach of the limitations set out in his license agreement at the time he is selling plant material of the variety. However, there will only be an infringement if such limitations relate directly to the essential features of the CPVR. As the CJEU had not been provided with the license agreement in question, it had to leave it for the referring court to assess whether the clauses in dispute fell un-der this definition. With regard to the second question, the CJEU decided that for judging on the infringement, it is irrelevant whether the third party buying the material was aware of the limitations contained in the license agreement. Conclusions for growers and breeders The CJEU ruling contains a positive decision for the holders 20 www.CIOPORA.org | CIOPORA Chronicle April 2012
of CPVR titles. For Licensees it should now be perfectly clear that their license agreements constitute more than just pieces of paper. Breaching them may permanently “contaminate” the plant material affected. However, one issue, which has not been dealt with in the decision, is also worth mentioning. It seems questionable, whether at all a CPVR infringement may have occurred in the Greenstar-Kanzi Case. When the trees were sold to Mr Hustin in 2004, no CPVR protection had yet been granted for ‘Nicoter’. Only provisional protection existed for the variety. Such protection, however, does not include the right to prohibit the exploitation of a variety. As the CPVR regulation currently does not foresee licenses in CPVR applications at all, it might prove difficult to establish an infringement in the present case. With a view to the current wording of the law, breeders should weigh carefully marketing variety constituents of new varieties before the actual grant of a CPVR. ||| 1 LL.M. (Cardiff ), certified IP Lawyer at Luther Rechtsanwaltsgesellschaft mbH, Hamburg. 2 Judgment of the Court of Justice (First Chamber) of 20 October 2011 in Case C-140/10, reference for a preliminary ruling under Article 267 TFEU from the Hof van Cassatie (Belgium), made by decision of 25 February 2010, received at the Court on 17 March 2010, in the proceedings Greenstar-Kanzi Europe NV v Jean Hustin, Jo Goossens. See also the Floriculture International CIOPORA Chronicle of March 2011, p. 15. 3 For further information on the case see also P. van der Kooij, “Uitputting in het kwekersrecht”, BIE 2011, p. 404; P. de JONG, “Uit-putting in het kwekersrecht”, IRDI 2012, p. 91. PBR & Royalty, Trademark in & out of China professional, independent, and experienced PBR & TM attorneys, royalty administration & license contracts Beijing Hengda Agforest PBR (Plant Breeders’ Right) Attorney Co. Suncarrier (Beijing) Intellectual Property Rights Firm Dr. Shujun YU Mobile 0134 3039 8811 / 0153 6086 9922 Address Room 504, Building 20, 66 Guangqu Road, Chaoyang District Beijing 100022, CHINA E-mail cnpvp@163.com/ yushujun@yupvp.cn Website www.yupvp.cn RAI is worldwide representing breeders of ornamental plants in the field of plant breeders rights and plant patents. RAI advises breeders ADMINISTRATION INTERNATIONAL ROYALTY PROFESSIONAL PLANT PATENT LICENSING BREEDERS WORLDWIDE how to protect their varieties, takes care of filing applications, develops license agreements, collects royalties and performs controls. Worldwide watching your rights. www.rai-worldwide.com Office Europe North-America Latin-America Japan 's-Gravenzande, Holland Fort Myers, Florida, USA Bogotá, D.C. Colombia SA Kashiwa-Shi, Chiba Phone (+31) 174-42 01 71 (+1) 239 278 9917 (+571) 601 9018 (+81) 4 7146 5188 Fax (+31) 174-42 09 23 (+1) 239 278 4833 (+571) 256 3855 (+81) 4 7146 5332 E-mail info@royalty-adm-int.nl royalty@rai-na.com info@rai.com.co japan@royalty-adm-int.nl CIOPORA Chronicle April 2012 | www.CIOPORA.org 21
Page 1 and 2: April 2012 • www.ciopora.org The
Page 4 and 5: Table of Contents 08 CIOPORA serves
Page 6 and 7: CIOPORA Members Agro Selection Frui
Page 8 and 9: A welcome from the President CIOPOR
Page 10 and 11: www.fides.nl FI 412 Ciopora adverte
Page 12 and 13: U.S. Plant Patents The United State
Page 14 and 15: U.S. Plant Patents Plants can be le
Page 16 and 17: Opinion The Selecta Group is a worl
Page 18 and 19: Jondle & Associates is a full servi
Page 22 and 23: Law cases In October 1996, De Ruite
Page 24 and 25: Plant breeders play a fundamental r
Page 26 and 27: Interview FCI had the honour to spe
Page 28 and 29: Interview the bath water. Another a
Page 30 and 31: Patents Parallel to the progress of
Page 32 and 33: Opinion PlantHaven is an independen
Page 34 and 35: Company profiles Founded in 1897, t
Page 36 and 37: International PBR systems As a coun
Page 38 and 39: LAW FIRM WITH FLOWER POWER Smithuij
Page 40 and 41: Marker technology DNA markers were
Page 42 and 43: Marker technology Time periods for
Page 44 and 45: Country profile Ornamental horticul
Page 46 and 47: International PBR systems For more
Page 48 and 49: Enforcement GESLIVE is a nonprofit
Page 50 and 51: 50617 Wuesthoff-Logo 10.11.2005 9:1

2012 CIOPORA Chronicle

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