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