Know your limits: Don’t delay in enforcing your Community plant variety rights

A recent landmark ruling has clarified infringement claim time limits for Community plant variety rights (CPVRs) where right holders are aware of the infringement.

On 14 October 2021, the Court of Justice of the European Union (CJEU) provided a preliminary ruling in the so-called “Nadorcott” case (C-186/18). This case was referred to the CJEU by the Tribunal Supremo (Supreme Court, Spain) and centres on a CPVR granted in 2004 protecting the Nadorcott variety of mandarin trees. Since 2006, José Cánovas Pardo SL (“Pardo”) had cultivated this variety of mandarin tree, without authorisation of the right holder. Despite knowledge of the infringement since 2007 and letters from the managers of the right (ultimately, Club de Variedades Vegetales Protegidas [CVVP]) demanding that the infringing acts cease, it was not until 2011 that CVVP made a claim against Pardo in the Juzgado de lo Mercantil (Commercial Court, Spain).

The Commercial Court dismissed the claim of infringement in view of Article 96 of the CPVR Regulation (EC No 2100/94 of 27 July 1994). Article 96 stipulates inter alia that the holder of a CPVR has three years from the time at which the right was granted, and they knew about both the act of infringement and identify of the infringer to make a claim. (If there is no such knowledge, Article 96 sets the time bar for infringement claims to a remarkably longer 30 years from termination of the act concerned.)

CVVP appealed to the Audiencia Provincial de Murcia (Provincial Court of Murcia, Spain), and the decision of the Commercial Court was overturned. The Provincial Court held that because the Nadorcott mandarin trees were still being cultivated, there were ongoing acts of infringement. It interpreted Article 96 to mean that only acts of infringement which took place more than three years before CVVP’s action were time barred; resulting acts of infringement less than three years before CVVP’s action were not time barred. Pardo was ordered to pay compensation and cease cultivation. However, a subsequent appeal to the Spanish Supreme Court led to the case being referred to the CJEU, as clarification was deemed necessary on how ongoing acts of infringement should be interpreted in view of Article 96.

The CJEU ruled that the three year time limit imposed by learning of the act of infringement and of the identity of the infringer when the CPVR is granted applies irrespective of the ongoing nature of the infringement. They decided that the date when the right holder first learns of the infringement starts the clock, whilst the date when the infringement stops has no effect.

In addition, the CJEU clarified that an infringement claim may relate to a set of acts of infringement. Production or reproduction, conditioning for the purpose of propagation, offering for sale, selling or other marketing, exporting, importing and stocking for these purposes all require authorisation of the right holder under Article 13 of the CPVR Regulation. Infringement claims relating to a set of such acts are time barred only when the right was granted and the holder knew of each individual act and the liable party. With the Nadorcott case now back at the Spanish Supreme Court, it remains to be seen how they will implement the CJEU’s ruling on sets of acts of infringement.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.