According to news reports, an appellate court in Granada, Spain recently affirmed a lower tribunal’s denial of a request by Swiss multinational Syngenta for provisional measures against a company it claimed was infringing Syngenta’s European Community plant variety rights. Syngenta con Kumato vs Ekologic Seeds con Tomachoc, Teleprensa (May 9, 2013). Syngenta, however, notes that the case is not over.
SYNGENTA’S CLAIMS. Syngenta sought to prohibit Almería-based Ekologic Seeds from selling its “SHIR” (or “TOMACHOC”) tomato variety on the theory that SHIR was essentially derived from Syngenta’s KUMATO-branded tomato products, which are grown from hybrid tomato plants of the protected varieties SX387 and/or OLMECA. However, in a November 15, 2012 decision, the Juzgado de lo Mercantil de Granada rejected Syngenta’s request.
RULING OF THE PROVINCIAL COURT. Syngenta appealed the lower court’s order to the Provincial Court of Granada. In an April 19, 2013 decision, the appellate court dismissed the appeal. According to accounts of the decision, the court found no evidence that Syngenta’s OLMECA or SX387 varieties were used in the breeding efforts that led to the development of the SHIR/TOMACHOC variety. In addition, European Union officials purportedly compared Ekologic’s products with those of Syngenta and found 88.20% similarity. Such similarity is considered within the range of an acceptable degree of differences for a single group of varieties. The Provincial Court thus determined that the differences between the accused tomatoes and Syngenta’s protected varieties were “significant.”
CONTINUING CLAIMS. In the wake of the Provincial Court’s decision and publicity surrounding it, Syngenta has publicly noted that the appellate decision did not terminate its litigation against Ekologic in its entirety. Syngenta defiende sus derechos de propiedad sobre el Kumato, ElAlmeria.es (May 23, 2013). Syngenta declared that it intends “to defend vigorously its rights and all its products by all means at its disposal against any varieties that are capable of infringing intellectual property rights for its plant varieties.”
COMMENT REGARDING ESSENTIALLY DERIVED VARIETIES. The European Union’s Community Plant Variety Rights system grants to the breeder of a new, distinct, uniform, and stable plant variety an intellectual property right whose validity and effect are uniform throughout the EU. See Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights, as amended. Among other things, the plant variety right gives its owner the right to exclude other persons from reproducing, conditioning, selling, importing, exporting, or stocking seed of the protected variety without the owner’s authority. Although another breeder may use a protected variety for the purpose of breeding, developing, or discovering a new variety, the owner of the protected variety’s exclusive rights apply to subsequent varieties that are “essentially derived” from the protected variety. As defined in the Community Plant Variety Rights regulation, a variety is deemed to be essentially derived from a protected variety when–
(a) it is predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety;
(b) it is distinct … from the initial variety; and
(c) except for the differences which result from the act of derivation, it conforms essentially to the initial variety in the expression of the characteristics that results from the genotype or combination of genotypes of the initial variety.
At the time of this writing, the decision of the Provincial Court of Granada was not publicly available. When a copy becomes available, this post will be updated with a more detailed look at how the court addressed the vexing question of essential derivation.
by Shawn N. Sullivan, June 5, 2013.