Agritech Thymes: One of Europe’s oldest grape plant variety rights is invalidated

The Italian courts recently heard a case of infringement of a Plant Variety Right (PVR) held by Sun World International LLC protecting the Sugraone grape variety and of the corresponding trademark ‘Superior Seedless’.

The defendants: Gianni Stea Import-Export s.r.l. and Angela Miglionico, were accused of infringing both the PVR and the trademark. In response, they counterclaimed that the PVR lacked novelty and that the trademark was invalid for non-distinctiveness. The lack of novelty argument is an interesting argument given that the PVR is one of the oldest seedless grape variety rights to exist, having been filed by Sun World in 1983 and held unchallenged. The PVR was near expiry when the case was brought, but clearly valuable enough for Sun World to attempt to enforce.

The defendants argued that the Sugraone PVR lacked novelty over public marketing of the variety in the USA during the late 70s. They provided evidence in reports of significant areas of land in California being used to cultivate the variety. It is generally difficult to prove public prior use of any variety or invention, but especially so when it dates back several decades. However in this case, the proprietor of the PVR in seeking to reinforce the distinctive character of the trademark under dispute alongside the PVR, gifted the evidence to the defendant that the variety was indeed publicly available in the 70s. A testimony provided to the court by the Senior Vice President of Sun World to the EUIPO during the trademark discussions referred to use of the trademark ‘Superior Seedless’ to market the Sugraone variety in the 70s thereby admitting that the variety was disclosed to the public before the PVR was filed, and even before the available grace period at the time.

Sun World tried to escape this admission by arguing that such activities were not novelty destroying for the PVR because novelty could not be destroying by marketing harvested material of the variety i.e. the grapes themselves, however the court disagreed and held that the action of an offer for sale covered both plant and fruit and pointed out that UPOV includes harvested material in the definition of novelty.

The PVR was therefore held to lack novelty, after many years of being in force. Of course breeders must consider what marketing activities they are undertaking relative to the timing of filing for PVRs, more so this case highlights the need for an integrated defence strategy when disputes span across IP rights to ensure that arguments in defence of one right do not prejudice another.

This article was prepared by Partners Punita Shah and Ellie Purnell.