Since 2004, protection of plant breeder’s right in Taiwan has become largely in line with the benchmarks set by the 1997 Act of the UPOV’s Convention (although Taiwan is not a member.) As provided in Taiwan’s Plant Variety and Plant Seed Act, a new plant variety being distinct, sufficiently uniform and stable can be protected under plant variety rights (PVR) for 25 years in the case of a tree or a perennial vine plant, and 20 years for all other plant species, both counting from the grant of the PVR. Nevertheless, PVR litigations are quite rare. It was only until the end of 2018 that we first saw an IP Court decision on a PVR dispute (see our report here.)
As in all IP right disputes, “what shall we compare” is a crucial question. For a patent or design case, the decades-old golden rule affirmed in numerous decisions is simple: compare a sample accused product against the patented claims or design drawings rather than a real product embodying the patent or design. Yet shall a similar rule apply in a PVR case? In a appellate judgment rendered in September 2020, the IP Court addressed this issue for the first time, and the answer is a loud and clear “yes.” Idyll Floral Co., Ltd. v. Taipei Flowers Auction Co., Ltd. et al., 109 Min Zhi Shang 1, Taiwan’s IP Court (September 2020).
The plant in dispute is a variety of white rose, flowerily named by Idyll, the right holder and plaintiff, as “The Fully Snow-Mountain White” (the writer’s translation). According to the judgment, the rose also goes by the name of “Advance+ (Lexjori)” and was bred by an Amsterdam-based company. For the reader’s convenience, we will simply call it Snow Mountain.
The PVR application for Snow Mountain was filed in April 2007 with the Committee of Agriculture (COA), the authorized agency in charge of PVR applications. However, the application underwent a seven-year long examination, only getting approved in April 2014. One reason for this lengthy trial is that Snow Mountain was found to appear similar to a senior variety called “The Jade White” (the writer’s translation) which, according to the court’s findings, had been circulated on Taiwan’s market since 2005 but is never registered. The COA took Snow Mountain as a distinct variety only after Idyll identified seven distinguishable traits in Snow Mountain, all of them pertaining to the plant’s exterior characteristics, with no DNA-related information being submitted.
The crucial difference lies in petal colors. While both are white roses, Snow Mountain shows a light greenish hue at the petal’s inner center and the rim of the petal’s distal end. Under the Royal Horticultural Society Colour Charts, this greenish tint is coded RHS 157D. As for Jade White, it appears to be a “purer” white rose, without the aforesaid nuanced chromatic changes.
However, in the infringement lawsuit, the roses took an unexpected turn after the parties produced their seedlings for a court-designated expert to grow and compare. Through the cultivation, the expert, a government agency named Taiwan Seed Improvement and Propagation Station, discovered that the sample Snow Mountain from Idyll did not come out looking like the expected roses. The greenish hue in the petal disappeared; the roses looked very similar to Jade White. More, they also looked very similar to the defendants’ roses cultivated side by side in the Station’s garden. Not surprisingly, the defendants argued that their flowers were out and out the Jade White roses.
Leaving aside other legal issues that may topple the Snow Mountain, shall we take into consideration the trait changes occurring during the cultivation of a sample variety in the test of infringement? Shall the court, as the plaintiff suggested, compare the parties’ roses which have indeed grown together from the same soil? The IP Court replied:
The scope of variety right protection is defined by the identified characteristics of the plant variety examined by the COA, and these characteristics are [conceptually] equivalent to patent claims. Therefore, what shall be compared are those COA-identified characteristics and the characteristics shown in the accused variety. An actually cultivated sample variety has no place in the comparison, any more than the sample variety examined by the COA during the PVR prosecution should it survive to this date. … As the accused plant is distinctive from the Totally Snow-Mountain White, it is another variety and not infringing. [Italics added]
In a dictum, the IP Court surmised that the trait loss occurring in the Station’s garden could be a result of loss of uniformity and stability, supposing the deposited sample is indeed a Snow Mountain rather than a Jade White in the first place. Under Article 37 of the Plant Variety and Plant Seed Act, the COA “shall nullify a plant variety right, either upon request or ex officio” if the variety is proved to have lost its uniformity and stability. Of course, it is too soon to say that Snow Mountain might be eventually downgraded to just another name for Jade White, especially since Idyll has filed an appeal to the Supreme Court.
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