2013 CIOPORA Chronicle

own educated guess about the
plants’ distribution and sales and
the profits made by the alleged
infringer, but such “homemade”
evidence is unlikely to
be accepted by a court. Or he
can use the efficient discovery
mechanisms laid down by law.
For example, back in 2004,
in the so-called “Enforcement
Directive”, the European Union
set up an intellectual property
(“IP”) framework for rightsowners,
including plant breeders,
to collect evidence of alleged
infringements and to enforce their
rights against the infringers based
on that evidence. This framework
has now been transposed in the
national laws of the EU Member
States. One of its key tools for plant
breeders, who suspect that their
IP rights have been infringed, is
the right to apply to the courts for
measures to preserve evidence of
alleged infringements and to order
suspects to provide information
on the origin and distribution
networks of the plants concerned.
This tool was largely based on the
Belgian “discovery procedure”
(“saisie contrefaçon” in French and
“beslag inzake namaak” or “BIN”
in Dutch).
Over the years, this has proved to
be the most powerful and costefficient
means of enforcement
available to IP rights holders who
are trying to enforce their rights. A
recent case law has confirmed that
the procedure is not only used by
holders of “traditional” IP rights,
such as trademarks or patents, but
increasingly also by plant variety
right holders.
Not just a Belgian affair
This Belgian discovery is not just
a Belgian affair. It can be (and is
frequently) used by both Belgian
and foreign breeders and it can
be applied for on the basis of a
Belgian, foreign or European title
to discover infringements across the
EU. The threshold for obtaining
a discovery measure has been set
fairly low: all the claimant needs are
“indications” of infringement and
a “prima facie” valid plant variety
right (which is presumed). Once
these conditions have been met, the
courts can order the discovery procedure
to be implemented to cover
“any items, elements, documents
or methods which may serve to
establish the alleged infringement
as well as its origin, destination and
scope”. Each of these elements will
be described by a court-appointed
expert, or two or more experts in
complex cases. The expert’s findings
are submitted to the court in a detailed
report, usually within one or
two months, and copies are sent to
the parties. The expert’s independence
means the report provides a
solid basis for further legal action,
unlike the “home-made” evidence
mentioned above.
Molecular
marker
technology.
The discovery
procedure’s value
to plant breeders
was recently
demonstrated
in the ‘Calypso’
(pictured) case
between Exotic
Plant and Deroose
Plants.
Bromeliads
The discovery procedure’s value to
plant breeders was recently demonstrated
in the Calypso case between
Exotic Plant and Deroose Plants.
Exotic Plant held a Belgian and a
Dutch plant variety right for the
bromeliad variety ‘Calypso’. It came
across similar bromeliads, sold
in Belgium and the Netherlands
as ‘Starlight’ and ‘Catherine’ by
Deroose Plants.
It claimed before a Belgian court
that these two varieties infringed
its Belgian and Dutch plant variety
rights for ‘Calypso’ and the court
ordered a discovery procedure to be
conducted by two experts. The first
expert, a bromeliad specialist from
Naktuinbouw, was asked to provide
DNA fingerprints for ‘Starlight’
and ‘Catherine’ and morphological
descriptions of the plants. The
second expert, an accountant and
IT specialist was asked to estimate
the number of plants produced and
sold by Deroose Plants in Belgium
and abroad. The first expert’s report
showed that the plants of all three
varieties were morphologically as
good as identical, and thus allowed
to conclude that ‘Starlight’ and
‘Catherine’ infringed Exotic Plant’s
‘Calypso’ plant variety right. The
court issued an injunction ordering
Deroose Plants to withdraw all
‘Starlight’ and ‘Catherine’ plants
from sale in Belgium and the
Netherlands and to destroy any
remaining propagating material.
The court then ordered Deroose
Plants to pay Exotic Plant damages,
based on the figures in the second
expert report. |||
About the author
Philippe de Jong is a lawyer in the Intellectual Property and Life
Sciences department at the ALTIUS law firm in Brussels. He has
been a member of the Brussels bar since 2002, and specialises
in patents, plant variety rights and parallel import litigation.
He also advises clients on the regulatory framework for
medicinal products and plants, including GMOs. He worked as a
consultant for the CPVO and has represented a large number of
innovating companies before the Belgian and European courts.
He is also an active member of CIOPORA.
CIOPORA Chronicle April 2013 | www.FloraCultureInternational.com 31