Nador Cott Protection SAS v Asda Stores Limited & Anor

A dependent plant variety must satisfy all cumulative requirements in section 7(3) of the Plant Varieties Act 1997. The derived variety must be predominantly derived from the initial variety, retain the expression of its essential characteristics, be clearly distinguishable, and, subject to differences resulting from derivation, conform to the initial variety in the expression of those characteristics.

Essential characteristics are assessed by reference to the variety as a whole and its performance or value in the supply chain. Characteristics may be essential even if they are not used for DUS testing. The reasonable-opportunity limitation in section 6(3) is flexible and fact-sensitive. It concerns the relevant statutory rights, and requires enforcement to the extent available, not merely their assertion.

Nador Cott Protection SAS claimed infringement of its UK plant breeders’ right in the Nadorcott mandarin variety. The alleged infringement consisted of Tang Gold mandarins sold by Asda Stores Ltd and imported by International Procurement and Logistics Ltd.

The principal issues were whether Tang Gold was an essentially derived, and therefore dependent, variety under section 7 of the Plant Varieties Act 1997, and whether the claimant had lost its right of action concerning harvested material because it had had a reasonable opportunity under section 6(3) to exercise its rights against the unauthorised use of propagating material.

1. Issue 1 — dependent variety. The claim was dismissed. Tang Gold was predominantly derived from Nadorcott and was clearly distinguishable from it by differences in fertility. Those matters satisfied sections 7(3)(a) and (b), but all the requirements of section 7(3) were cumulative.

2. The words “retaining” and “conforms” had to be given their ordinary meaning in the statutory context. Essential characteristics were those fundamental to Nadorcott as a whole, contributing to its performance or value and relevant to participants in the production and supply chain. The assessment was variety-specific. Seediness and pollen viability were essential characteristics of Nadorcott because they materially affected growers’ orchard planning, management, costs, risks and fruit marketing.

3. Tang Gold did not retain the expression of those essential characteristics. Although the differences in fertility resulted from the irradiation used to derive Tang Gold and were therefore disregarded when applying section 7(3)(c), that did not cure the failure to satisfy section 7(3)(a). Tang Gold was consequently not essentially derived from, or dependent on, Nadorcott.

4. The concept of a dependent variety was a narrow extension of the UK plant breeders’ right. The general policy of preventing plagiarism while encouraging breeding could not displace the statutory language. The result might differ under the EU Regulation, whose wording was materially different.

5. Issue 2 — reasonable opportunity. The alternative conclusions were given in case of appeal. The burden of proof on the section 6(3) limitation rested on the party raising it, here Asda, although the evidential burden could shift once the issue was raised.

6. “His rights” meant the rights conferred by the Act, not all corresponding rights held worldwide. “Unauthorised use” meant use requiring the authorisation of the holder of a plant variety right in the territory concerned. Harvested material from countries where the claimant held no relevant right could not fall within section 6(3).

7. “Exercise his rights” meant enforcing the right to the extent available, rather than merely asserting it. “A reasonable opportunity” was a flexible question of fact and degree. The cascade principle did not impose a rigid rule prohibiting all parallel litigation. On the assumed basis that Tang Gold was dependent, the claimant had not been prevented from pursuing its UK claim.