Not yet finito for Finita: plant varieties reference races through the CJEU

With so much else going on today, it seems almost a pity to let everyone know that the tangled world of plant variety protection was stirred to its roots by the publication of the Opinion of Court of Justice of the European Union (CJEU) Advocate General Jääskinen in Case C‑242/14 Saatgut-Treuhandverwaltungs GmbH v Gerhard und Jürgen Vogel GbR, Jürgen Vogel and Gerhard Vogel, this being a request for a preliminary ruling from the Landgericht Mannheim, Germany, on Council Regulation 2100/94 of on Community plant variety rights

In the underlying legal action that led to this CJEU reference, Saatgut-Treuhandverwaltungs GmbH (STV), a German company which brings together different plant variety right holders, was asserting the rights of the holder of the winter barley variety ‘Finita’, which is protected at EU level under the Basic Regulation. STV's website lists all the protected plant varieties administered by it and the fees payable for planting those varieties. STV asks farmers annually, to provide general information on any planting of one of those varieties and, for that purpose, sends them declaration forms together with a guide listing all the protected varieties administered by it in the relevant marketing year and the identity of the corresponding right holders and persons enjoying rights of exploitation.

The Vogels, who had no contractual relations with STV, did not respond to those requests for information. However, in December 2011, STV received information that, in the marketing year 2010/2011, the Vogels had been processing ‘Finita’ seeds. In May 2012, STV wrote to ask the Vogels to verify that information, which indicated undisclosed use of propagating material of that variety obtained by planting the variety, asking them to reply by 20 June 2012 at the latest. The Vogels did not comply with that request.

In July 2012, STV asked the Vogels to pay EUR 262.50, this being the full fee that would be due for licensed use of ‘Finita’ seeds (STV;s "C- Licence fee") as compensation for the damage suffered as a result of the undisclosed planting of that protected variety. No payment being received, STV sued the Vogels for it before a local court in Euskirchen. In September 2013 that court declined jurisdiction and referred the case to the Landgericht (Regional Court), Mannheim.

Vogels among the barley

Said STV, the Vogels had to pay it reasonable compensation under Article 94(1) of the Regulation [which provides for injunctive relief and payment of compensation, or both, in the case of an infringement] in the amount of the full C-Licence fee because their planting constituted an infringement, since the Vogels were not ‘entitled’ to plant the seeds within the meaning of that provision. Said STV, the Vogels could rely on the derogation under Article 14(1) of that Regulation ["... for the purposes of safeguarding agricultural production, farmers are authorized to use for propagating purposes in the field, on their own holding the product of the harvest which they have obtained by planting, on their own holding, propagating material of a variety other than a hybrid or synthetic variety, which is covered by a Community plant variety right"], as they did not comply with the obligation to pay the plant variety right holder the equitable remuneration referred to in Article 14(3), adding that any farmer should fulfil that payment obligation in principle before sowing, but in any event by the end of the marketing year in which the protected variety was planted. What's more, the farmer should do so on his own initiative, irrespective of whether or not a request for information was made in time by the right holder.

No, said the Vogels:at the very most, they only owed the reduced fee for ‘authorised’ planting under the derogation laid down in Article 14(1) of the Regulation. What's more, for the conditions governing entitlement to compensation to be satisfied, there would have to be an infringement of the obligation to provide information to the right holder, as laid down in EU law, which was not proven here. At this point the Landgericht Mannheim decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1. Is a farmer who has planted propagating material obtained from a protected plant variety without having concluded a contract for so doing with the plant variety right holder required to pay reasonable compensation, as provided for in Article 94(1) ..., and — if he has acted intentionally or negligently — to compensate the holder for any further damage resulting from the infringement of the plant variety right in accordance with Article 94(2) ..., where he has not yet fulfilled his obligation under Article 14(3), fourth indent, of that regulation, in conjunction with Articles 5 and 6 of [the Implementing Regulation], to pay an equitable remuneration (planting fee) at the time when he actually made use of the product of the harvest for propagating purposes in the field?

2. If the first question is to be answered to the effect that the farmer can still fulfil his obligation to pay an equitable planting fee even after he has actually made use of the product of the harvest for propagating purposes in the field, are the aforementioned provisions to be interpreted as fixing a period within which a farmer who has planted propagating material obtained from a protected plant variety must fulfil his obligation to pay an equitable planting fee in order for the planting to be capable of being regarded as “authorised” for the purposes of Article 94(1) of [the Basic Regulation] in conjunction with Article 14 of that regulation?’

This morning the Advocate General proposed that the Court answer the questions as follows:

Articles 14 and 94 of Council Regulation ... 2100/94 ... on Community plant variety rights in conjunction with Article 5 et seq. of Commission Regulation ... 1768/95 ... implementing rules on the agricultural exemption provided for in Article 14(3) of Regulation ... 2100/94 must be interpreted to the effect that a farmer is able to make use of the product of the harvest which he has obtained by planting, on his own holding, propagating material obtained from a protected variety without the authorisation of the right holder, provided he pays the holder an equitable remuneration in accordance with Article 14 within a period beginning on the date on which the farmer actually seeded the product of his harvest and expiring at the end of the marketing year in which that use took place.

The Opinion highlights some of the elements of the Regulation that lack clarity, but seems to make sense of them, balancing the public interest with the farmer's right and the concerns of right holders.

Once again this case is an example of the increased speed with which the CJEU is processing intellectual property cases. The reference for a preliminary ruling was received only in May of last year and we have already got as far as the Advocate General's opinion. According to the IPKat's calculations, we should be sure of a final ruling this summer.