Invalidation and Nullity Proceedings – What is the Duty of the CPVO

|Gert Würtenberger|

As the conditions laid down in Articles 7 (distinctness), 8 (uniformity), 9 (stability) and 10 (novelty) are prerequisites for the grant of a Community plant variety right, the same is unlawful if it turns out that one of these conditions is not or no longer given. In this case, it is in the public interest that such a right shall be declared null and void. The relevant conditions are provided for in Articles 20 (nullity) and 21 (cancellation). While the CPVO has the duty to open invalidation proceedings ex officio if it becomes aware, inter alia, through its examination practice that a protected variety did not fulfill the protection requirements at the time protection was granted or does no longer fulfill the same, applications to declare a protected variety to be null and void can also be filed by third parties. In such a case, two questions arise: Under which conditions has the CPVO a duty to follow the request of an Applicant to open invalidation or nullity proceedings and to which extent is it obliged to develop own investigations in order to examine whether the conditions for nullity or invalidation are given. In the following matter, the General Court of the European Union gave guidance to answer these questions:

In infringement proceedings initiated by the holder of a Community plant variety right for a sugar beet, an inconsistency had come to light in the certificate of registration for the plaintiff’s variety. The defendant in Italian proceedings informed the CPVO about the same. Subsequent to a clarification request by the CPVO, a further exchange of correspondence with the Examination Office lead to several corrections of the comparative distinctness report. The defendant in the Italian infringement proceedings informed the CPVO that other errors had come to light in the corrected version of the comparative distinctness report. This resulted in further corrections, which caused the defendant in infringement proceedings to lodge a request for nullity of the Community plant variety right pursuant to Article 20(1)(a) of Regulation No 2100/94 on Community plant variety rights, argues that the successive corrections of the comparative distinctness report showed that the variety did not satisfy the “distinctness” requirement.

As a result of this request, correspondence between the CPVO and the examination office caused the latter to issue a further amended version of the comparative distinctness report including new characteristics, which the Examination Office considered to be appropriate for the purpose of establishing the distinctness of the attached variety. This caused the CPVO to inform the parties subsequently of the nullity proceedings that the variety was distinct from all other varieties of common knowledge within the meaning of Article 7 of Regulation 2100/94.

The Applicant claimed in particular that as a result of the various corrections to the comparative distinctness report the last and penultimate versions showed that the notes of expression did not come from the comparative growing trials related to the attacked variety right that took place in 2003 and 2004, but were sourced from its official variety description of the c0mparison variety as established at the time a Community plant variety right was granted for the same. It argued that such practice was not only unacceptable but unlawful as it goes against all the rules applicable in that field – pursuant to which the distinctness of a candidate variety must be based solely on data obtained during comparative growing trials in two independent growing cycles following the application to register a candidate variety.

The CPVO dismissed the Applicant’s request for nullity on the ground that the attacked variety was clearly distinct from the reference varieties. The CPVO argued that at the time the final report was issued the Examination Office was aware of the correct notes of expression for all the characteristics of the candidate variety and, therefore, the transcription errors in the comparative distinctness report were immaterial with regard to the finding of distinctness of that variety.

In appeal proceedings the Applicant pursued its claim. Thus, to consider distinctness of the attached variety on the basis of data not achieved through a comparative growing trial, was a severe defect. It continued to claim that it was common ground between testing institutes that, due to the fact that notes of expressions of sugar beet-specific characteristics are extremely influenced by external factors, the probability of observing the same notes of expression from comparative growing trials carried out in different years was extremely low.

The Board of Appeal dismissed the appeal as unfounded, holding in particular that the Applicant had overestimated the importance of the comparative distinctness report. The document merely contained additional information derived from the results of the comparative growing trials. The Board of Appeal confirmed that it was a basic rule that, in comparative growing trials, the direct comparison of a candidate variety with reference varieties was a condition precedent for the grant of a Community plant variety right. According to the relevant technical protocol, candidate varieties of sugar beets had to be directly compares with reference varieties in growing trials to be carried out normally in at least two independent growing circles. As the examiner from the Examination Office confirmed at the hearing before the Board that such direct comparison had been carried out in the present case, the Board of Appeal confirmed the decision of the CPVO.

The Applicant filed an action with the General Court of the European Union against this decision causing the Court to discuss the CPVO’s obligation in nullity proceedings according to Article 20(1)(a) of the Council Regulation (EC) No. 2100/94 on Community plant variety rights. The Court took the opportunity to point out general rules determining the CPVO’s and equally the Board of Appeal’s duties.

The Court first of all emphasized again that, in principle, the CPVO has a broad discretion concerning the declaration of nullity of a plant variety right. Thus, only where serious doubts are given that the conditions under which a variety may be protected had been met on the date of the examination, re-examination of the protected variety by way of nullity proceedings may be justified. Third parties seeking a declaration of nullity must produce evidence and facts of sufficient substance to raise serious doubt as to the legality of the plant variety right following the examination provided for in Articles 54 and 55 of the Regulation. For the Court it was apparently of particular importance that notes of expression relating to the attacked variety were not based on data collected from the comparative growing trials of 2003 and 2004, but where sourced from the official variety descriptions of comparison varieties. As the notes of expression relating to the attacked variety were not based on data collected from the comparative growing trials in 2003 and 2004, neither the decision of the CPVO nor that of the Board of Appeal was legally  founded, the Court annulled the contested decision. It emphasized that the Board of Appeal was required to use its broad investigative powers under Article 76 of the Regulation to verify the source of the notes of expression of the reference variety and to ensure the appropriate conclusions.  In accordance with the principles of sound administration laid down in Article 41 (1) of the Charter of Fundamental Rights, the Board of Appeal was required to examine carefully and impartially all the relevant particulars with a view to assessing the validity of the Community Plant Variety at issue and to gather all factual and legal information necessary to exercise that discretion. In that regard, it referred to the previous judgment of the European Court of Justice in re Schniga v. CPVO, C-625/15 P, EU:C:O:C:2017:435, para 84 (see in that regard the discussion of this decision in this IP blog [here]).

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