Appleyard Lees acts for successful defendants, Asda and IPL, in first claim for infringement of plant breeders’ rights brought to trial in the UK
Mr Justice Mellor has handed down his ruling in case no. HP-2025-000001 Nador Cott Protection S.A.S. (NCP) v Asda Stores Ltd (Asda) (1) and International Procurement & Logistics Ltd (IPL) (2), notable for being the first judgment in relation to a claim for infringement of plant breeders’ rights in the UK.
In this landmark decision, Justice Mellor has ruled that Asda and IPL did not infringe the plant breeders’ right of NCP’s Nadorcott variety through its sales of the Tang Gold variety of mandarins.
Powell Gilbert LLP acted for the Claimant, NCP, represented by Mr Andrew Lykiardopoulos KC and Mr Maxwell Keay at trial. Appleyard Lees IP LLP acted for the Defendants, Asda and IPL, who were represented by Ms Anna Edwards-Stuart KC and Ms Miruna Bercariu at trial.
Background
NCP brought an infringement claim against Asda and IPL, Asda’s subsidiary and logistics arm in relation to the sale of the Tang Gold (also known as Tango) variety of mandarin oranges. Asda was one of a number of UK retailers selling the Tang Gold variety which, like the Nadorcott variety, was also protected by grant of a UK plant breeders’ right.
It was a matter of fact that the Tang Gold variety had been developed by the University of California from budwood sent by Dr Nadori in 1985. Subsequently, both the Nadorcott and Tang Gold varieties had been protected by the grant of Community Plant Variety Rights, which were converted to UK Plant Breeders’ Rights following Brexit and were both widely propagated globally.
NCP had been involved in infringement proceedings with Eurosemillas S.A, the master licensee of the Tang Gold variety, since 2008 in Spain and since 2014 in South Africa, in relation to the supply of the propagating material of the Tang Gold variety, which to date have failed to reach trial in both jurisdictions.
Proceedings
Some 40 years after the first supply of budwood to the University of California and over 15 years after Tang Gold was first commercially propagated, NCP issued proceedings against Asda and IPL, seeking damages/ an account of profits relating to sales of Tang Gold in the UK. NCP claimed that the Tang Gold variety was an essentially derived variety (EDV) of Nadorcott, which would have meant that any dealings in the propagating material of the Tang Gold variety required the consent and licence of Nadorcott, and were otherwise unauthorised and infringing. Furthermore, it alleged that any dealings in the harvested material of the Tang Gold variety (i.e. its fruit) by retailers would also have required its consent, unless NCP had a reasonable opportunity to exercise its rights in relation to the unauthorised use of the propagating material, which it claimed it had not.
Asda defended the claim on the basis that Tang Gold was not an essentially derived variety because it did not retain the expression of the “essential characteristics” of the Nadorcott variety. At the time proceedings were brought by NCP, no judgment had been reached in any jurisdiction determining the ‘EDV status’ of Tang Gold, and in the UK no judgment had been reached regarding the statutory meaning of an EDV for any plant variety. Asda also argued that NCP had a reasonable opportunity to exercise its rights in relation to any unauthorised use of the propagating material of Tang Gold in Spain and/or South Africa. In other relevant jurisdictions, Asda claimed that any use was not unauthorised as NCP had no relevant plant variety rights.
NCP sought a swift judgment against Asda under the Shorter Trial Scheme (with trial listed within 12 months of issue of the claim). As noted by Justice Mellor in his judgment following the CMC, “if NCP succeed on the ‘infringement’ issues it will have achieved an important judgment which can be deployed against other supermarkets selling Tang Gold”.
Asda’s position was noted by Graeme Morrison, Senior Legal Director at Asda at the time.
“Asda works extremely hard to ensure that it meets all legal regulatory and compliance obligations and all ethical standards when sourcing its products from its suppliers. Asda works with International Procurement and Logistics Limited (IPL) its wholly owned subsidiary, which conducts procurement and logistics services for Asda.
Asda sells both Nadorcott mandarin oranges and Tang Gold mandarin oranges in its stores. As such it has no interest in what it now understands to be the underlying historic dispute between the Claimant and Eurosemillas S.A relating to plant variety rights.
As a retailer, however, Asda promotes consumer choice for its product ranges. It is concerned that the present action by the Claimant, if not properly determined, will have the effect of damaging consumer choice as Tang Gold mandarin oranges are a popular product.“
Judgment
Justice Mellor found in favour of Asda and IPL, dismissing NCP’s infringement claim and ruling that the Tang Gold variety was not an essentially derived variety of Nadorcott because it did not retain the expression of the essential characteristics of Nadorcott resulting from its genotype, specifically for the characteristics of “seediness” and “viable pollen”. Asda was therefore successful in demonstrating that the Tang Gold variety did not satisfy the requirements of an essentially derived variety under section 7(3)(a) Plant Varieties Act 1997.
In a note of caution for UK retailers, Justice Mellor found that the “reasonable opportunity” defence did not protect retailers where fruit was grown abroad and imported into the UK, because it only applied to UK plant breeder’s rights under the Plant Variety Act 1997. However, he also ruled that unauthorised use of propagating material could only take place in jurisdictions in which plant variety rights subsisted.
Commentary
Partner Chris Hoole of Appleyard Lees comments: “This is an important decision on many levels. In finding for ASDA, the court has given clear, seminal guidance on the correct interpretation of essentially derived varieties under UK legislation. Through their vigorous defence to NCP’s claim, ASDA and IPL have paved the way for consumer choice for mandarins, and perhaps for the wider fruit and vegetable market. I’m extremely proud of the team effort of ASDA and IPL’s in-house teams, counsel, Anna Edwards-Stuart KC and Miruna Bercariu and our core team at Appleyard Lees, comprising of myself, Chris Thomas, Arnie Francis and Alice Smart”.
Senior Associate at Appleyard Lees Chris Thomas has commented “This was an unusual set of proceedings brought in the Shorter Trial Scheme in which the Claimant had intimate knowledge of its claim, because it had developed its own plant variety right and litigated many key aspects of the case for over 17 years, whereas the Defendants were retailers selling fruit in good faith, but without prior knowledge of the underlying dispute, or access to the relevant testing data for the varieties before the issue of proceedings. We are delighted we were able to secure a positive outcome for Asda and IPL, which reflects well on the balanced instructions we received throughout from the in-house legal team.”
Arnie Francis, Principal Associate at Appleyard Lees, adds: “This is a brilliant result for Asda and IPL. It is fantastic to have worked with them, our counsel Anna and Miruna, and the team here at Appleyard Lees to achieve this outcome in such a seminal case in which the scope of breeders’ rights in relation to essentially derived varieties was considered by the courts for the first time.”
Graeme Morrison, Asda’s Senior Legal Director, said: “Being able to provide our customers with the products and ranges they love is the reason we defended this case strongly, and we are happy that as a result of this ruling we can continue to do just that. This is a landmark case in the UK with repercussions across the wider sector and we are pleased with the outcome.”
Appleyard Lees is a full service intellectual property practice in the UK with a specialist plant breeder’s rights team.
