Nador Cott Protection S.A.S. v Asda Stores Limited & Anor

A stay of plant breeders’ rights infringement proceedings pending determination of a validity challenge is discretionary. The court must apply the Overriding Objective and the interests of justice, having regard to the relationship between the proceedings, the risk of inconsistent decisions, delay, and the prejudice to each party.

The principles governing stays pending European Patent Office opposition proceedings are not directly transferable where validity of a UK plant breeders’ right can be determined only by the UK Plant Varieties Office and no equivalent amendment mechanism exists. Parallel proceedings may properly continue where they concern different legal questions and there is no significant risk of inconsistent findings.

The claimant brought proceedings alleging infringement of a UK plant breeders’ right in the Nadorcott mandarin variety by the defendants’ sale of Tang Gold mandarins. The defendants applied to stay the infringement claim pending their recently commenced application to the UK Plant Varieties Office for a declaration that the right was null and void under section 21 of the Plant Varieties Act 1997. They also sought permission to amend their Defence.

The central issues were whether the validity application substantially overlapped with the infringement issues, whether a stay was required to avoid prejudice or inconsistent decisions, and whether the proposed amendments should be allowed.

1. Stay application dismissed. The power to stay arose under the court’s inherent jurisdiction, reflected in CPR 3.1(2)(g), and had to be exercised consistently with the Overriding Objective and the interests of justice.
2. The stay principles in IPCom v HTC [2013] EWCA Civ 1496, developed for concurrent European Patent Office opposition and national patent proceedings, were not directly analogous. That regime involves two routes to revocation and the possibility of amendment under section 77(3) of the Patents Act 1977. Validity of a UK plant breeders’ right had only one domestic route, through the UK Plant Varieties Office, and there was no equivalent amendment mechanism.
3. There was no significant overlap creating a real risk of inconsistent decisions. The Office would determine the pleaded validity grounds, while the court would determine derivation, dependent-variety status, unauthorised use and reasonable opportunity under the Plant Varieties Act 1997. The underlying factual background was largely common, but the legal consequences in issue were different.
4. The defendants’ asserted prejudice was substantially contingent on relief being granted before the validity challenge was resolved. If the infringement trial succeeded while validity remained outstanding, the court could then consider whether relief should be granted. A stay would cause substantial delay and might prevent effective enforcement before expiry of the right in 2029. The factors therefore weighed firmly against a stay.
5. The amendment to paragraph 9C(c) of the Defence was allowed. It was a permissible conditional plea concerning the defendants’ alternative position on whether Nadorcott was a distinct variety. Amendments to paragraph 1, insofar as they assumed that a stay would be granted, required reformulation.