[Guest Post] Novelty of Cripps Pink Apples under Council Regulation on Community Plant Variety Rights

Cripps Pink is a sweet, crisp and crunchy variety of apple that was developed by Mr John Cripps (‘the breeder’), a researcher in the Plant Industries division of the Department of Agriculture and Food Western Australia (‘the Department’), by crossing Golden Delicious and Lady Williams varieties. This case is about the novelty of the Cripps Pink variety (Malus Domestica Borkh species) as assessed under the Council Regulation (EC) No 2100/94 of 27 July 1994 on Community Plant Variety Rights (OJ 1994 L227, ‘the Basic Regulation’). Dr Titilayo Adebola, Lecturer in Law at the University of Aberdeen, with research interests in international intellectual property, plant variety protection and geographical indications  kindly provides the following review:

Upon application for a Community plant variety on 29 August 1995, the Community Plant Variety Office (CPVO) initially informed representatives of the Department that the Cripps Pink variety failed to fulfil the novelty condition under Article 10 of the Basic Regulation. This was because the application form for the Community plant variety right stated that the Cripps Pink apple trees were first marketed within the European Union (in France) in 1994 and first marketed outside the European Union (in Australia) in 1988. In response, the Department submitted that 1988 should be considered to be the date of the first plantings in Australia for experimental purposes. The relevant date for calculating novelty as required under Article 10 of the Basic Regulation was July 1992, which was the date when the Cripps Pink apple trees were first marketed in the United Kingdom under the trade name ‘Pink Lady.’ Following the Department’s submission, the CPVO granted Community plant variety right No 1640 to the Cripps Pink variety on 15 January 1997. 

The long-storing property of
Lady Williams with the sweetness
and lack of storage scald of Golden Delicious...
must be Cripps Pink!
Image: ChristinaEatsBrains

On 26 June 2014, Pink Lady America LLC (‘the applicant’), applied for nullity of the Cripps Pink Community plant variety right at the CPVO under Article 20 of the Basic Regulation, arguing that the Community plant variety right at issue did not fulfil the novelty condition laid down in Article 10 of that Regulation. By Decision No NN 17, delivered on 19 September 2016, the CPVO dismissed the applicant’s nullity application. On 18 November 2016, the applicant appealed the Board of Appeal of the CPVO, claiming that the CPVO had erred in its assessment of the facts and the evidence. It requested the Board of Appeal to rectify Decision No NN 17 of 19 September 2016 and to declare the Community plant variety right at issue null and void for lack of novelty pursuant to Article 10(1) of the Basic Regulation. In the alternative, the applicant requested that the Community plant variety right be declared null and void for lack of novelty pursuant to Article 10(1)(b), read in conjunction with Article 116 of that Regulation.  By decision A 007/2016 of 14 September 2017 (‘the contested decision’), the Board of Appeal dismissed the applicant’s appeal as unfounded.

In a further attempt to assert its position, the applicant appealed to the General Court (Third Chamber) on 23 February 2018, seeking these three orders. First, the annulment of the contested decision. Second, the annulment of the Community plant variety right No 1640 granted to the Cripps Pink variety, for lack of novelty, pursuant to Articles 10 and 20 of the Basic Regulation. Third, the payment of costs by the CPVO and the intervener. The General Court (Third Chamber) on 24 September 2019 dismissed the action in its entirety and ordered the applicant to pay the costs. The following section examines the details of the decision more closely.

On Novelty and Nullity: Articles 10, 20 and 116 of the Basic Regulation

Order 1. The applicant’s first order on the annulment of the contested decision comprised two pleas. The first was a substantive plea that the Board of Appeal infringed the provisions of Articles 10, 20 and 116 of the Basic Regulation by concluding that the Cripps Pink variety fulfilled the novelty condition at the time the Community plant variety right was granted. The second was a procedural plea that the Board of Appeal infringed inter alia Article 76 of the Basic Regulation by declaring inadmissible the applicant’s evidence submitted out of time during the administrative proceedings. This section will focus on the substantive plea.

The applicant based its substantive plea on three submissions (‘submissions’). First, the Board of Appeal incorrectly applied Article 10(1)(a) of the Basic Regulation (‘submission 1’). Second, the Board of Appeal was wrong to rely on Article 6 of the International Convention for the Protection of New Varieties of Plants of 2 December 1961 (the ‘UPOV Convention’) as revised on 19 March 1991 (‘submission 2’). Third, the Board of Appeal incorrectly assessed the novelty condition set out in Article 10(1) of the Basic Regulation (‘submission 3’).

Before examining submission 1 on the correctness of the Board of Appeal’s application of 10(1)(a) of the Basic Regulation, the conditions for the protection of new varieties are highlighted. Article 6 of the Basic Regulation provides that Community plant variety rights are granted for varieties that are distinct, uniform, stable and novel. The variety must also be designated by a denomination as per the provision of Article 63 of the Basic Regulation. The applicant hinged submission 1 on the novelty condition, which is delineated in Articles 10 and 116 of the Basic Regulation.

Article 10 (1) of the Basic Regulation explains: A variety shall be deemed to be new if, at the date of application determined pursuant to Article 51, variety constituents or harvested material of the variety have not been sold or otherwise disposed of to others, by or with the consent of the breeder within the meaning of Article 11, for purposes of exploitation of the variety: (a) earlier than one year before the abovementioned date, within the territory of the Community; (b) earlier than four years or, in the case of trees or of vines, earlier than six years before the said date, outside the territory of the Community.

Article 116 (1) of the Basic Regulation stipulates further: Notwithstanding Article 10 (1) (a) and without prejudice to the provisions of Article 10 (2) and (3), a variety shall be deemed to be new also in cases where variety constituents or harvested material thereof have not been sold or otherwise disposed of to others, by or with the consent of the breeder, within the territory of the Community for purposes of exploitation of the variety, earlier than four years, in the case of trees or of vines earlier than six years, before the entry into force of this Regulation, if the date of application is within one year of that date.

Essentially, Article 116 of the Basic Regulation extends the grace period laid down in Article 10(1)(a), from 1 year before the application for protection to 4 years (or 6 years in cases of trees) before the date of entry into force of the Basic Regulation. Accordingly, the General Court endorsed the Board of Appeal’s position that two grace periods were applicable. First, a period of 6 years before the entry into force of the Basic Regulation for sales and disposals within the territory of the European Union. Second, a period of 6 years before the filing of the application for sales or disposals outside of that territory. The Board of Appeal found that no evidence had been submitted showing that sales or disposals had been made, by or with the consent of the breeder, within the European Union more than 6 years before the entry into force of the Basic Regulation. Indeed, the Department’s application file showed that the Cripps Pink apple-tree variety was first marketed within the European Union in 1992 in the United Kingdom.

For submission 2 on the Board of Appeal’s reliance on Article 6 of the 1991 version of the UPOV Convention, the General Court posited that the twenty-ninth recital of the Basic Regulation provides that the Regulation takes into account provisions of existing international conventions such as the UPOV Convention. The UPOV Convention provides a sui generis form of intellectual property protection for new varieties of plants to encourage plant breeding, amongst others. It was adopted on 2 December 1961 and has been revised three times: 10 November 1972, 23 October 1978 and 19 March 1991 respectively. The Basic Regulation is modelled on the 1991 version of the UPOV Convention because the European Union is a party to it. Therefore, the General Court held that the Board of Appeal was fully entitled to refer to the 1991 version of the UPOV Convention. Still, it is imperative to point out that the Board of Appeal did not rely on the UPOV Convention, but rather, it relied on Article 10 of the Basic Regulation; hence the applicant’s submission was unfounded.

Barking up the wrong apple tree..
Image: Steve Brown

For submission 3 on the correctness of the Board of Appeal’s assessment of the novelty condition, it was established that under Article 20(1)(a) of the Basic Regulation, the CPVO is to declare a Community plant variety right null and void if the conditions laid down in Articles 7 to 10 are contravened. Furthermore, the CPVO has a broad discretion to declare a plant variety right null and void under Article 20 of the Basic Regulation, which it exercises on the basis of the evidence submitted to it by the applicant for a declaration of nullity (see Brookfield New Zealand and Elaris v CPVO and Schniga C-534/10 P). The General Court held that the Board of Appeal correctly concluded that the evidence provided by the applicant did not prove that the Cripps Pink variety had been sold or disposed of to third parties outside the European Union, by the breeder or with his consent, for purposes of exploitation of the variety before the timeline for novelty as laid out in Articles 10 and 116 of the Basic Regulation. 

Order 2. The General Court addressed the applicant’s second order on the annulment of the Community plant variety right No 1640 granted to the Cripps Pink variety quickly. It held that Court neither has jurisdiction to review the legality of decisions taken by the lower-ranking bodies of the CPVO nor to annul or vary them. Accordingly, the second order was declared inadmissible.

Order 3. The General Court also addressed the applicant’s third order on the payment of costs by the CPVO and the intervener quickly. It held that under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant was unsuccessful, it was ordered to pay the costs in line with the forms of order sought by the CPVO and the intervener.

The General Court (Third Chamber)

From the foregoing, the applicant’s first, second and third orders were rejected. Consequently, the action was dismissed in its entirety and the applicant was ordered to pay the costs. As it stands, the Department holds valid Community plant variety rights for the Cripps Pink variety. The case furnishes noteworthy lessons on Community plant variety rights, including the following. In construing the novelty condition, varieties planted for experimental purposes are immaterial while the grace periods provided under Articles 10 and 116 of the Basic Regulation are applicable. Finally, the case suggests that the CPVO adopts a facilitative approach to the grant of Community plant variety rights.

For more on the origin and description of Cripps Pink, see J.E.L Cripps, L.A Richards, and A.M Mairata, “ ‘Pink Lady’ Apple” (1993) 28 (10) HortScience 1057.