February 2014

My thanks to Thomas Leidereiter for pointing this out to me. However, the commentary below and any errors or inaccuracies it contains are mine alone. Remember that PFE is not qualified to give legal advice and the following should merely be regarded as personal opinion.

The European Commission has proposed amendments to the Regulation that controls Community Trademarks (CTMs). CTMs are often used for branding plant varieties, series of plant varieties or even entire breeding programmes. For example, we look after plants covered by the CTM “Walberton’s” which is applied to plants originating from breeding activites at Walberton Nurseries. We attach brand values of quality and the assurance of many years of experience and trialling of new varieties. Other examples that you would be familiar with are the mark “Surfinia” (Suntory), applied to the well-known Petunia breeding, and “Wave” which is used for Petunia and Viola (Ball Horticulture).

CTMs are regulated by EC Regulation 207/2009 which you can read here. The European Commission has proposed amendments which are contained in document COM(2013) 0161 final, whch you can read here. Paragraph 10 of the latter document proposes the addition of a new paragraph (l) to Article 7 of the former, which is the section that covers absolute grounds for refusal for CTMs at the application stage. The new text reads as follows:

“trade marks which contain or consist of an earlier variety denomination registered in accordance with Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights with respect to the same type of product”

This is a new provision. Consider it carefully. If one applies for a CPVR using the name “Whatever”, one could then not obtain a CTM in the word “Whatever” for class 31 goods (plants), even though you would be the owner of both the CPVR and the CTM. “Pink Whatever” or “Whatever Beauty” would also be disallowed.

Moreover, if you wanted to apply for a CTM for class 31 and that contained a word that had previously been used by anyone as the variety denomination for a CPVR, then your application would be refused without any further consideration, even if the variety had been commercialized under a different (marketing) name.

The upshot of this proposal is that vast swathes of potential trademark names have been rendered unusable (there have been more than 40,000 applications for CPVR, I believe). Furthermore, applicants for CPVR will have to use a codename for the denomination if they have any intention of applying for CTM for their variety (which is probably good practice anyway). Potentially, existing CTMs which contain or are the same as CPVR variety denominations that pre-date the CTM application could be challenged and declared invalid.

Also, note that the amendment only refers to Community Plant Variety Rights and not to national PVRs in the Member States. So, potentially (and we’re being wilfully obscure here and our learned friends may well pull this to pieces!) a breeder could apply for a national PVR in a Member State in January 2015 and then apply for CTM in March 2015. In the meantime, no commercial exploitation of the variety is undertaken. Then, in January 2016 (before the first anniversary of the national PVR application), the applicant submits an application for CPVR using the rule of priority to claim the earlier filing date. Because the owner of the CPVR is the same as the owner of the CTM, the CTM does not preclude the use of that name for the CPVR denomination and yet, because the CPVR is filed after the CTM, the CTM remains valid. (Mind you, this would be very convoluted and potentially costly, just for the sake of not using a codename for the CPVR denomination).

All of which is jolly exciting and nicely illustrates why breeders pay a company like Plants For Europe Limited to worry about this sort of stuff so that they don’t have to!

A quick update on the progress of the European Commission’s Plant Reproductive Material Regulation.

A vast number of amendments to the Regulation have been proposed by the two committees (COMAGRI – agriculture and COMENVI – environment). They run to something like 500 pages and had to be translated into the official languages of the EU. The first 70 pages or so were all proposals to reject the Regulation in its entirety.

The main political groupings in the European Parliament met three weeks ago and all but one (the LibDem group) agreed that they would push for complete rejection of the proposed Regulation. Last week, COMENVI voted on a motion to reject the Regulation and the motion was approved by 49 votes to nil, which is pretty unanimous! COMAGRI will be voting on February 11th.

So, it seems likely that the Regulation will be rejected in its entirety. In the meantime, the European Council (the relevant government departments of the Member States) continues to plough through the document. We understand that they have just about finished the first read-through and intend to begin a second read-through, although that plan may be changed in light of events in the committees.

However (you knew there was a “however”, didn’t you?), rejection of the proposal may not be good news and it certainly is not the end of the story.

Firstly, if the Regulation is rejected, it is likely that the Commission will begin to insist on more rigorous enforcement of the 1999 Directives. Some larger growers have systems which would be in compliance with that – full traceability in their systems, all batches of plants identifiable as belonging to a particular lot, correct and robust labelling of varieties. Some other growers, particularly in ornamentals, won’t be so compliant.

Secondly, the Regulation will not go away. It is part of a package of five Regulations and the rest of the package will fail without this Regulation. Included in the package is an important (and mostly good) Regulation on Plant Health, so there is good reason to support the Regulation, although only if it includes the amendments proposed by our stakeholder group (all of which were proposed by various (and, in some cases, multiple) MEPs and included in the 500-odd pages of amendments currently being translated).

It is likely that the current text of the Regulation will be killed off fairly soon (although the COMAGRI vote is not until February 11). It will then be up to the Commission to make a new proposal. We expect that they will begin a new consultation process first before drafting a new text, most likely consulting with COMENVI, COMAGRI and the Council (member states) – and possibly (hopefully!) also with the stakeholder groups that have sprung up in several countries.

We have no idea what the timetable might be for that. The current European Parliament will be dissolved around Easter ready for the elections in May. The new parliament will not sit until June and then will have summer recess. In October, the Commission will finish its term and a new Commission will be appointed. In the meantime, the Greeks currently hold the EU rotating presidency and are driving the timetable – and it seems that they do not see it as a high priority. From July 1, the presidency passes to the Italians and it is not likely that they will see it as a priority either!

So, it looks like we are going into a period of uncertainty on this matter, with no idea whether what we end up with will be better or worse than what we started with. If the Regulation survives but with all our amendments included, that would probably be the best outcome, but that now seems unlikely.

We are always pleased when the cost of something is reduced. In 2013, the application fee for a Community Plant Variety Right was reduced from EUR 900 to EUR 650. On 1st January this year, the annual fee for CPVR was reduced from EUR 300 to EUR 250.

However, prices going down is a rare event. Prices going up seems more common.

The CPVO has been conducting a review of the fees it pays to the various national “competent authorities” that conduct DUS examinations of plant material subject to a PVR application. These include GEVES in France, the Bundesortenamt in Germany, the Naktuinbouw in the Netherlands and NIAB here in the UK. The fees are reviewed every three years or so and are calculated and negotiated based on the average costs incurred by the examination centres over the preceding three years. This process was completed in 2013 (relating to costs in the period 2010 to 2012) and has resulted in an average increase of 10% in fees paid by the CPVO to the examination centres.

The CPVO is now working on the second part of this fees review, which covers the fees levied by the CPVO to applicants for DUS examintion. The last review of fees was carried out six years ago, in 2008, with the new fees effective from 1 January 2009. The CPVO intends to propose a new fee structure to the European Commission, along with a simplification of the fee groups scheme (whereby different genera with similar examination requirements are grouped together with the same fee). This proposal should be completed later this year, with the new fees likely to become effective on 1 January 2015.

It seems almost certain that the DUS examination fees payable by applicants will increase. An increase of at least 10% seems probable, perhaps a little more (although the CPVO runs at a surplus and has undertaken to reduce that surplus).

Applicants should note that the DUS examination fee due for payment will be the fee applicable at the time that the DUS examination commences, not the fee applicable at the time of application. Therefore, it is almost certain that all applications made from now on (and many recently submitted) will be subject to DUS fees in the new structure, at the new higher rate.