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Infringement of Plant Variety Right Should be Judged According to the Characteristics Thereof Approved by the Competent Authority
With regard to the legal remedy for the infringement of plant variety right, Article 40 of the Plant Variety and Plant Seed Act provides that the holder of the plant variety right or its exclusive licensee may request the removal of the infringement and the prevention of any threat of infringement, and may claim damages against any persons who intentionally or negligently infringe on the plant variety right as well. As for how to determine whether the allegedly infringing plants are indeed infringing varieties, on 24 September 2020, the Taiwan Intellectual Property Court (hereinafter "IPC") rendered a 2020 Min Zhi Shang Zi No. 1 civil judgment specifically indicating the manner in which it is to be judged.
The plaintiff in this case is a floral company A which claims that the defendant, floral supplier B, planted company A’s own "Advance+ (Lexjori)" rose plants without being licensed, and the plants were sold on the market by another defendant, floral company C, under the name of "Avalanche," jointly infringing the plant variety rights of all the "Advance+ (Lexjori)" roses. However, floral supplier B and floral company C argued that the "Advance+ (Lexjori)" and "Avalanche" were of different varieties, so they had not infringed the plant variety rights of flower company A by planting or selling the "Avalanche" roses.
At trial, the IPC held that the allegedly infringing plant was not the same variety as the plaintiff's "Advance+ (Lexjori)" (hereinafter "subject plant variety"), and therefore concluded that floral supplier B and floral company C had not committed infringement. The logic of the judgment is summarized as follows:
- When the plaintiff applied for subject plant variety right, the Woody and Other Floral Plant Variety Evaluation Committee of the Council of Agriculture (hereinafter "COA") selected the "Avalanche" roses released in the market in 2005 as the control variety because its characteristics were the closest to those of the subject plant variety. As a total of seven distinctive characteristics were found based on the characteristic identification results of the subject plant variety against the control variety "Avalanche," the plant variety right was then granted.
- The protection of the subject plant variety right not only covers the plant seeds which the holder owns, but also the plant seeds that express the characteristics of the subject variety noted in the Table of Characteristics of the subject plant variety right approved and published by the competent authority, and the varieties not clearly distinguishable from the subject variety.
- There were up to 20 distinguishable characteristics between the subject plant variety of the plaintiff's application for plant variety right and the allegedly infringing plants. Consequently, the allegedly infringing plants are clearly distinguishable from the subject plant variety, and not of the same variety.
- In the first-instance trial, plant samples from both parties were sent to the Seed Improvement and Propagation Station for cultivation and characteristics comparison, and the conclusion was that the two plants were “not distinct." However, the plants provided by the plaintiff at trial did not have the seven distinctive characteristics noted in the subject plant variety right that the plaintiff originally obtained, and could not be proved to be identical to the subject plant variety. According to the identification results, the characteristics expressed by the plants provided by the plaintiff were different from the seven distinctive characteristics in the original plant variety right, but were closer to those of "Avalanche" roses instead. It may be possible that the plants provided by the Plaintiff were in fact "Avalanche," not "Advance+ (Lexjori)." Alternatively, it’s possible that the "Advance+ (Lexjori)" variety may have lost its uniformity and stability in the course of its survival, thereby causing grounds for cancelling the subject plant variety right. Therefore, the characteristics identification report was still not sufficient to prove that the allegedly infringing plants were of the same variety as the plaintiff's "Advance+ (Lexjori)".
- Although the plaintiff motioned to compare the allegedly infringing plants with the "Advance+ (Lexjori)" rose plants used for applying for the subject plant variety right that were still alive at that time, the IPC further pointed out that the scope of the plant variety right (its legal concept is similar to the granted claims of invention patent) refers to the characteristics of the subject plant variety right granted by the COA. Consequently, in order to determine whether the plant variety right is infringed, the object to be compared with should be the characteristics of the plant variety right granted by the COA, rather than the living plants the plaintiff is actually planting or the plants that have been surviving since the application for the subject plant variety right was filed, because the existing plants may not be of the subject plant variety.