Plectranthus ornatus withers in Luxembourg

Possibly overshadowed by the ruling in the Salvador Dali case (noted here by the IPKat), Case C‑38/09 P, Ralf Schräder v Community Plant Variety Office (CPVO) is an altogether less publicly visible event -- an appeal to the European Union's highest Court against the General Court's dismissal of an appeal from the CPVO. The IPKat has been assiduously following this dispute: see "Just Another Plectranthus, says the CFI", "A Lion Roars ... a Kat Laughs" and "Don't Dig Up Technical Assessments, Warns AG").

Right: Plectranthus ornatus -- very cute, but it never stood up in court

In short, Schräder applied to the CVPO for a Community plant variety right under Council Regulation 2100/94 on Community plant variety rights. The candidate variety, SUMCOL 01, was originally thought to be a Coleus but it was later agreed that it was a Plectranthus. The CPVO asked the Bundessortenamt (the German Federal Plant Variety Office) to conduct a technical examination, which it did, finding that SUMCOL 01 was not distinct from Plectranthus ornatus but that the examination had to be retaken. The examiner responsible for the technical examination then asked the curator of the Kirstenbosch Botanical Gardens in South Africa to provide cuttings or seeds to use as reference varieties against which SUMCOL 01 could be examined. The curator replied that the species to which SUMCOL 01 belonged was commonly grown in South Africa and that he knew that species very well. The final report of the Bundessortenamt concluded that SUMCOL 01 was not distinguishable from the reference variety sent from Kirstenbosch.

In the light of this, the CPVO rejected Schräder's application for lack of distinctiveness. Schräder appealed to the CPVO Board of Appeal. There followed further investigations and even a visit by one of its members to South Africa, for which the CPVO sought to charge Schräder an advance of 6,000 euro. Schräder refused to pay, arguing that he had not sought the field trip to South Africa and challenging the evidential basis of the Board's decision. The Board of Appeal ultimately dismissed Schräder's appeal against rejection of his application, determining that SUMCOL 01 could not be clearly distinguished from Plectranthus ornatus. Schräder then lodged an application at the Court of First Instance, seeking to annul the Board's decision. The Court dismissed this application and Schräder appealed to the Court of Justice.

Schräder put forward two pleas in support of his appeal: (i) procedural defects, (ii) infringement of Community law. The CPVO argued that the appeal was inadmissible on the ground that it dealt only with matters of fact and assessments of evidence and/or that each of the pleas should be rejected and the appeal should therefore be dismissed.

The Court of Justice this morning dismissed Schräder's appeal, ordering him to pay costs. Of the many grounds on which the appeal was based, only two were ruled to be inadmissible but the rest were admitted and then dismissed on their merits. On the issue of inadmissibility the Court had this to say (at para. 73):

"By seeking to demonstrate that the General Court could not reasonably conclude that the facts and circumstances referred to above were not sufficient to refute the conclusion drawn by the Bundessortenamt and confirmed by the Board of Appeal, Mr Schräder, although formally pleading an error of law, is essentially calling into question the factual assessments carried out by the General Court and, in particular, disputing the probative value it attached to those facts".

Challenges to factual assessments are not the province of a legal appeal to the Court of Justice.

Says the IPKat, this ruling doesn't just bring to an end an unpleasant dispute which has dragged on for many years; it also provides the CPVO with the assurance that its judgment was correct as to the manner in which it discharges its functions under the regulatory regime through which it operates. Adds Merpel, dressing challenges to factual assessments up as though they are points of law is one of the great skills of the lawyer. The fact is that lawyers get away with it relatively infrequently -- but probably just about often enough to make them feel it's worth trying.

Plant varieties: a good place to start here

How to tell plants apart: an expert writes here

The IPKat's favourite plant varieties here

Don't dig up technical assessments, warns AG

Beset by an avalanche of new IP developments on a daily basis, the IPKat is always delighted to receive the help and assistance of his friends. He is accordingly very grateful to Bart Kiewiet (President, Community Plant Variety Office) for taking the time and effort to draw his attention to a recent Advocate General's Opinion (of 3 December) which the Kat knew was coming but quite overlooked at the time it was published online. Let Bart take up the narrative here:

"Here you find the opinion of the Advocate General Mazak in Case C-38/09 P concerning Community plant variety rights. The object of this case is a ruling of the Court of First Instance in Schräder v CPVO (Case T-187/06) mentioned on your website in November 2008 [here and here].

I would like to draw your special attention to paragraphs 25 and 26 of the conclusions (see below), in which the AG, in the wake of the Court of First instance, states that judicial review of complex assessments of a technical , scientific economic or social nature must be rather marginal. The relevant case law is, in the opinion of the AG, also applicable to decisions taken in the framework of the Community plant variety protection system.

"25. In that regard, it is apparent from the case-law of the Court that where Community authorities are, when exercising their powers, called upon to make complex assessments of a technical, scientific, economic or social nature, those authorities are to be accorded a certain margin of appreciation. It also follows from the case-law that, when reviewing an administrative decision based on such an appraisal, the Community judicature must not substitute its own assessment for that of the competent authority. Consequently, judicial review in such matters must be limited to verifying that the measure in question is not vitiated by any manifest errors or misuse of powers and that the authority concerned has not manifestly exceeded the limits of its discretion. In particular, as the Court of First Instance pointed out..., the Community judicature must in such cases examine whether the evidence relied on is factually accurate, reliable and consistent and whether that evidence contains all the information which must be taken into account in order to assess the complex situation concerned.

26. That case-law is, in my view, also applicable as regards the grant of Community plant variety rights to the extent, however, that an administrative decision in that field is the result of complex assessments of the kind referred to in the aforementioned case-law, as is without doubt, as the Court of First Instance held ..., the case when it comes to appraising the distinctive character of a plant variety in the light of the criteria laid down in Article 7(1) of Regulation No 2100/94.

I hope that you will draw the attention of your website friends to this opinion".

The IPKat is always pleased to oblige.

Incidentally, the AG advises the Court to dismiss the appeal -- presumably on the basis that once the position of the CPVO and the CFI has become firmly embedded and takes root, it's not a good idea to keep digging it up ...

Plants that are dangerous to cats here

Cats that are dangerous to plants here

Phones not on hold

Just out this morning and freshly available on BAILII is Mr Justice Kitchin's judgment n Nokia Corporation v Her Majesty's Commissioners of Revenue & Customs [2009] EWHC 1903 (Ch), in which he dismissed Nokia's application for judicial review of HMRC's refusal to detain a consignment of counterfeit 400 Nokia phones and accessories under the Counterfeit Goods Regulation (Regulation 1383/2003), which has been incorporated into UK law by The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (SI 2004/1473).

Right: phoning from Colombia, Geraldine was baffled to discover that her brand new Nokia wasn't living up to her expectations ...

The items in question were on their way from Hong Kong to Colombia -- neither of which are countries within the European Union -- and it was during a brief transitory stop at London's Heathrow Airport that they were inspected and found to be fakes. "Detain these goods!", said Nokia. "Can't", said HMRC, which "had difficulty in understanding how goods could be counterfeit within the meaning of the Counterfeit Goods Regulation unless there was evidence that they might be diverted onto the EU market".

After an extensive recitation and review of the law, Kitchin J got straight to the heart of the issue:

"Clearly any power of arrest or detention of goods by HMRC must be exercised in accordance with law. It must have a clear basis for interfering with the property of a third party".

The judge then reviewed the not insubstantial ECJ case law and summarised it as follows:

"49. ... First, infringement of registered trade mark requires goods to be placed on the market and that goods in transit and subject to suspensive customs procedures do not, without more, satisfy this requirement. ...

50. Second, the position is different if the goods in the transit procedure are subject to the act of a third party which necessarily entails their being put on the market (“the Montex exception”). But the burden of establishing this rests on the trade mark proprietor.

51. Third, a mere risk that the goods may be diverted is not sufficient to justify a conclusion that the goods have been or will be put on the market.

52. Fourth, the Counterfeit Goods Regulation has not introduced a new criterion for the purposes of ascertaining the existence of an infringement of a registered trade mark or to determine whether there is a use of the mark which is liable to be prohibited".

Applying these four principles, Kitchin J could only refuse the application for judicial review and express his regret:

"80. ... I recognise that this result is not satisfactory. I can only hope it provokes a review of the adequacy of the measures available to combat the international trade in fake goods by preventing their transhipment through Member States".

The IPKat shares the judge's sentiments. Merpel adds, the same ruling presumably applies equally to situations in which the goods in question are fake brake pads, counterfeit medicines or, which is just as serious, tainted cat food. A review of both the policy and the mechanics of implementation of the detention of goods is certainly in order.