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The nightmare continues in ECJ Nadorcott decision (2019)

The IP lawyer, Darron Saltzman, Principal of Hort-IP Law in Australia, prepared this short note on the recent decision issued by the Italian Court of Cassation in Miglionico v Sun World International LLC (21 March, 2024 - R.G.N. 25489/2022), "the Court stated the following "principle of law":

"In the matter of Community plant variety rights, it is null and void, for contrary to public policy, given the violation of art. 13(2) and (3) of Council Regulation (EC) No 2100/94, as interpreted by the Court of Justice, the contractual clause which gives the holder of intellectual property rights on patented cultivars also the power to identify the persons who will be responsible only for the distribution of the fruits obtained by the producer previously authorized to use the varietal constituents of the protected variety from which those fruits have been produced, where the latter are unusable as propagating material."

The Miglionico decision should not be welcomed or lauded by breeders or anyone else involved in the world of plant breeders' rights. It seriously undermines the intent and structure of all IP regimes, in particular plant breeders' rights established under the umbrella of the UPOV Convention.

When the UPOV Convention itself and the corresponding national legislation of Contracting States all expressly identify the (exclusive) rights afforded to a breeder in respect of a protected variety and also expressly state in the clearest terms that "the breeder may make his authorization subject to conditions and limitations", then, pronouncements such as the "principle of law" quoted above are completely baseless and unfounded.

The 2019 ECJ Nadorcott decision created and, unfortunately, continues to generate uncertainty and confusion in the world of plant breeders' rights. And for no good reason. The two simple and unequivocal facts of the Nadorcott case are these:

1. The plants involved were made available to the public with the authority of the breeder before the grant of any PBR; and

2. There were no restrictions whatsoever placed on the purchaser of the plants supplied before the grant of PBR protection.

No action for infringement or other wrongdoing could ever have succeeded on any grounds. The outcome hinged entirely and solely on the issue of "authorization of the breeder" in connection with the relevant propagating material. The ECJ discussion of and decision on all other matters was irrelevant and unnecessary.

The decision tells breeders that EU PBR protection operates in a vacuum, to the exclusion of all other laws. The decision in effect denies breeders not only the express rights granted under EC No 2100/94, but of their right to freedom of contract and of the rights granted under other statutory protections such as trademarks.

Put simply, if the decision in Miglionico would have been different if the variety in question was either never protected by PBR or had ceased to be protected by PBR, then there must be a fatal error in the decision," concludes Saltzman.

For more information:
Darron Saltzman
Hort-IP Law
Tel: +61 437 001 661
Email: [email protected]

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