Asda's application to stay court proceedings in a Plant Variety Right (PVR) dispute has been dismissed; infringement proceedings will go ahead, despite pending PVR invalidity proceedings for Tang Gold.
Proceedings have been initiated in the UK, asserting that Tang Gold (which was developed by irradiating Nadorcott cuttings) is invalid on the basis that it is 'essentially derived' from Nadorcott. Nadorcott has, itself, already been the subject of invalidity proceedings at the Community Plant Variety Office (CPVO), where it was upheld as being valid in 2019.
Protecting the Nadorcott Name
Nadorcott is a variety of mandarin orange that is considered to be high-quality, sweet, with a good acid balance, easy to peel and practically seedless. The fruit was discovered in Morocco in the 1980s.
Nador Cott Protection S.A.S. (NCP) is the holder of a UK Plant Breeder Right (PBR) and a corresponding EU Plant Variety Right (PVR) for the Nadorcott mandarin. The EU PVR was applied for in 1995 and granted in 2004. The UK PBR was derived from the EU PVR under the UK-EU Withdrawal Agreement.
PBR and PVR protection for the Nadorcott mandarin will expire in the EU and UK at the end of 2029.
Nadorcott validity has been repeatedly upheld
The Nadorcott EU PVR has been the subject of invalidity proceedings, beginning almost as soon as the PVR was granted, with an attack on the validity of the PVR. That objection failed on formal grounds, as the party complaining about the granting of the PVR (an agricultural cooperative) was held not to have a sufficiently direct commercial interest in the PVR to be entitled to object to the granting of the PVR, as seen in the CVPO Board of Appeal decision and the ECJ Court of First Instance judgment. No decision was made on the substantive matter of whether or not the PVR was valid.
The issue of invalidity arose again in 2016, with an application to the EU's Community Plant Variety Office (CPVO) by Eurosemillas SA for annulment (invalidity) of the PVR. The application was rejected by the CPVO in 2019 and the validity of the Nadorcott PVR was upheld. Eurosemillas appealed the decision, but the appeal was rejected by the Board of Appeal of the CPVO in a decision issued in January 2023, which has ultimately been upheld by the Court of Justice of the European Union (CJEU) in proceedings which were concluded in March 2025 (C-774/24).
Accordingly, the EU position is that the Nadorcott Plant Variety Right is valid.
Eurosemillas' interest in NCP's Nadorcott EU PVR arises because Eurosemillas holds licencing rights to a competing variety of easy-to-peel / sweet mandarin orange with good acidity balance known as Tang Gold (also known as Tango), which it sells widely. Tang Gold is virtually seedless under a broader range of cultivation conditions than Nadorcott.
Is the Tang Gold PVR valid?
Tang Gold was developed at the University of California by irradiating Nadorcott cuttings. NCP asserts that Tang Gold is therefore 'essentially derived' from Nadorcott and that Tang Gold infringes its Nadorcott PVR.
The University of California applied in 2011 for its own EU PVR for Tang Gold, which was granted in 2014. Despite objections from NCP, in view of their Nadorcott mandarin, the validity of the EU PVR for Tang Gold was upheld in 2016.
Does Tang Gold infringe the Nadorcott PVR?
In 2023, NCP issued infringement warning letters to cease sales of Tang Gold mandarins to supermarkets across Europe, including nine in the UK. Court proceedings were begun in early 2024 against Sainsbury's but settled in October 2024 when Sainsbury's agreed to remove Tang Gold from sale, pending the outcome of other proceedings concerning Nadorcott or Tang Gold.
Following their settlement with Sainsbury's, in November 2024, NCP moved their attention to Asda, but Asda declined to follow Sainsbury's lead by withdrawing Tang Gold. NCP commenced formal infringement proceedings against Asda in the Patents Court in January 2025.
In response to the infringement proceedings brought against it, Asda filed an application at the UK Plant Variety Rights Office (PVRO) for a declaration of invalidity of the UK PBR for Nadorcott.
In UK patent infringement proceedings, the invalidity of a patent can be raised as a defence to infringement by way of a counterclaim for revocation of the patent, meaning that both infringement and validity are considered together, within the same proceedings. In contrast, the validity of a UK PBR cannot be challenged before the court, and only the UK PVRO has jurisdiction under the Plant Varieties Act 1997 over decisions of validity of a UK PBR.
Asda applied for a stay of the Patents Court infringement proceedings, arguing that the validity of the PBR should be decided by the PVRO before the issue of infringement is considered by the court.
UK Court weighs the arguments
A hearing on the stay application was heard by Mr Justice Mellor on 14 April 2025. On 16 April 2025, Mr Justice Mellor issued his judgment dismissing Asda's application for a stay.
No information was available to the court as to how long it would take for Asda's validity challenge to be determined by the PVRO. Either party would also be entitled to appeal the PVRO decision to the Plant Varieties and Seeds Tribunal (PVST), and then to the Court by way of judicial review, such that it could be a considerable time before a conclusive decision on validity was available. The judge also noted the considerable length of the European proceedings.
Mr Justice Mellor also considered an analogy with patent infringement proceedings in respect of a UK patent granted by the European Patent Office. If the patent is under opposition before the EPO, it is common for one party to request a stay of UK infringement proceedings, to avoid two tribunals considering revocation of the same patent, and also considering potentially different possible amendments to the patent to avoid revocation. Mr Justice Mellor noted that, in contrast, there are not two routes to revocation of a UK PBR, since only the PVRO can decide validity, not the court; and a PBR can only be held to be valid or invalid – amendment is not possible.
The judge also noted that Asda's grounds of invalidity before the PVRO broadly followed the lines of attack considered and dismissed by the CVPO and the Board of Appeal in the Eurosemillas invalidity proceedings, possibly hinting that a plausible outcome of Asda's invalidity proceedings would be that the UK PBR would also be held to be valid.
Mr Justice Mellor considered that there was no significant overlap between the PVRO invalidity proceedings, which would decide on the validity of the Nadorcott UK PBR, and the Patents Court deciding on infringement, which would primarily turn on the issue of whether or not Tang Gold is essentially derived from Nadorcott.
If the infringement proceedings were not stayed and NCP were to succeed on the infringement issue before a decision on validity had been given, the judge considered that any court order on infringement could take the lack of a final decision on validity into account. The judge considered that whilst success on infringement would give NCP an important judgment which could be deployed against other supermarkets selling Tang Gold, they would be aware that the invalidity action remained outstanding and could take that into account in deciding how to respond.
On the other hand, if a stay were granted, a first instance decision on whether Tang Gold infringes Nadorcott might not come until at least 6 or 7 months after a final decision on validity (after all appeal routes). NCP had argued that there was no guarantee that this would happen before the PBR expired in 2029. Mr Justice Mellor could see little or no justification for imposing such a further delay on NCP if they might ultimately succeed in defeating the validity challenge.
Mr Justice Mellor stated that, in his judgment, the factors he needed to balance in deciding whether or not to grant a stay, came firmly down against the grant of the stay.
A trial date has already been listed to take place in late November and is estimated to last 3-4 days. The outcome will no doubt be eagerly awaited by other supermarkets currently selling Tang Gold mandarin oranges.
The enduring importance of IP protection
The Nadorcott–Tang Gold dispute is a vivid reminder that intellectual property rights are not static; they remain contested, defended, and tested throughout their lifetime. Even decades after Nadorcott was first discovered and granted protection, questions of validity and infringement continue to arise, shaping the commercial landscape for growers, retailers, and consumers alike.
This case demonstrates how plant variety rights, like patents and trademarks, require constant vigilance from rights holders to ensure their value is preserved. Enforcement actions, challenges, and appeals can span years, if not decades, and their outcomes have significant implications for entire markets. The Asda proceedings highlight that while the expiry of rights may appear distant, their protection can be decisive in determining commercial strategies right up to the very end of their term.
Ultimately, the battle between Nadorcott and Tang Gold underscores a key truth: intellectual property is not a one-time achievement but an ongoing commitment. For breeders, innovators, and businesses, securing IP rights is only the beginning, actively maintaining, enforcing, and defending those rights is what truly ensures that innovation and investment are rewarded in the long term.
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