Enforcement of PVRs in the Ornamental Sector

1. Enforcement of PVRs in the Ornamental Sector Forum Conference on IP Protection for Plant Innovation Amsterdam, 18 April 2008 TJEERD F.W. OVERDIJK Attorney-at-law Vondst Advocaten

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

3. Enforcement rules – relevant levels • CPVR; • Anti-Piracy Regulation (EU 1383/2003); • Enforcement Directive • National Plant Variety Acts;

4. 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.

5. 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;

6. 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!

7. 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.

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

9. DNA analysis:

10. AFLP Dendrogram:

11. 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).

12. 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.

13. 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!

14. 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.

15. 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?

16. 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.

17. 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.

18. 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.

19. 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.

20. 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.

21. 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.

22. 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.

23. Case 7: • Breeder B in DE has DE PBR for potplant; • 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 .

24. 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.

25. 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.

26. Contact details:tjeerd.overdijk@vondst-law.com+31(0)20 504 2000