Agritech Thymes: Rare UK Plant Variety Rights ruling provides guidance on the interpretation of “essentially derived varieties”

In this article, we examine a recent UK Plant Variety Right (PVR) case involving “Nadorcott” and “Tang Gold” mandarins. This judgement clarifies what constitutes an essentially derived variety (EDV) and the criteria used to make this determination. Notably, the Court not only considered the characteristics of the fruits but also the cultivation methods required to produce them.

By way of background, NCP has been granted a Community Plant Variety Right, and a corresponding EU-derived UK PBR, for the “Nadorcott” variety of mandarins. This variety produces viable pollen and yields seedless fruits when grown under conditions that prevent cross-pollination. By contrast, the “Tang Gold” variety, obtained through irradiation of plant material derived from “Nadorcott”, is characterised by seedless fruits and non-viable pollen.

NCP alleged that “Tang Gold” was essentially derived from “Nadorcott” and therefore infringed its PBR.

The judgement considered whether the principal differences between the two varieties, namely fruit seediness and pollen viability, constituted essential characteristics, which according to  the UPOV Explanatory notes on EDVs, “should contribute to the principal features, performance or value for use of a variety”  and be relevant to growers, sellers and consumers across the value chain. Applying this approach, Mr Justice Mellor decided that mandarins are grown to appeal to consumers, who value, among other traits, low-seed or seedless fruits. This characteristic, along with viable pollen, influences how growers cultivate the variety, because producing seedless fruits from “Nadorcott” requires controlled growing conditions, such as preventing access to pollinators. These cultivation requirements, and the resulting seedless fruits, were found to be relevant to “Nadorcott”, whereas “Tang Gold” does not require the same conditions to achieve that characteristic.

Mr Justice Mellor concluded that seediness and pollen viability are essential characteristics of “Nadorcott” which are not retained in “Tang Gold” as a result of the act of derivation (i.e. the irradiation). Accordingly, “Tang Gold” was found not to be essentially derived from “Nadorcott”, and therefore no infringement of NCP’s PBR was found.

As the case concerns fruits, the judgment also commented on whether infringement may have arisen through the unauthorised use of propagating material to produce the harvested material of the protected variety. Under section 6(3) of the Plant Varieties Act 1997, protection extends to harvested material if the PBR holder has had a reasonable opportunity to exercise their rights before the harvested material is obtained.

The judge noted that the origin of the fruits sold by Asda was unclear, with some originating from countries where the “Nadorcott” variety is not protected. He also considered the position in relation to fruits grown in South Africa and Spain, where proceedings brought by NCP concerning the unauthorised propagation of “Tang Gold” are still pending. However, the judge interpreted the “rights” referred to in section 6(3) as solely referring to the UK PBR and held that NCP had not had a reasonable opportunity to enforce its UK PBR before the harvested fruit was imported into the UK. He therefore concluded that had “Tang Gold” been found to be an EDV, NCP would have been able to exercise its rights in the UK under section 6(3) and obtain an injunction against further imports.

The case is ongoing: NCP is expected to appeal, and invalidity proceedings initiated by Asda before the UK Plant Variety Rights Office remain pending. We will continue to report on future developments.

The full judgement may be found here.

This article was prepared by Partner & Patent Attorney Punita Shah and Trainee Patent Attorney Delphine Lauté-Caly.