In October 2024, Taiwan’s Supreme Court addressed an essential question in plant variety right (PVR) cases for the first time: what should be compared when assessing PVR infringement? (Foreport Enterprises, Co, Ltd v Hong et al, 113 Tai-Shang 1006.)
Before Foreport, lower courts had divided views on this question. Some courts adopted a ‘plant-against-registration’ approach, under which the traits of the allegedly infringing plant were compared with the registered traits of the PVR-protected plant variety. This approach is analogous to the methodology used in patent cases, where the alleged infringing product is compared with the patent claims rather than the patented product (Idyll Floral Co, Ltd v Taipei Flowers Auction Co, Ltd et al, 109 Min Zhi Shang 1, Taiwan’s Intellectual Property Court, September 2020).
Other courts, however, favoured the ‘plant-against-plant’ approach, permitting a direct comparison between the accused infringing plant and the plaintiff’s variety sample, provided both were cultivated under identical conditions (Liu v Wang, 110 Min-Zhi-Shang-Yi 1, Intellectual Property and Commercial Court (the IPC Court), April 2023).
Analysis of the Foreport Enterprises case
The above disagreement was finally resolved in October 2024 by the Supreme Court’s Foreport decision, which upheld the plant-against-plant methodology. The Supreme Court indicated: “To determine whether two plants are of the same variety, it is necessary to observe and compare the differences in traits between the defendant’s plant and the actual PVR-protected plant, with both being cultivated under identical conditions and for a considerable period of time, rather than merely comparing [the defendant’s plant and] the registered traits.”
In this case, Foreport Enterprises was the exclusive licensee of a PVR for a white chrysanthemum variety named Delibaltica (plant variety publication No. 0936). The PVR application was filed in 2009 and granted in 2011, with 24 major traits registered. According to the findings of the lower court (the IPC Court), the defendants’ chrysanthemum sample differed in nine of these traits when compared with the registered traits. Under the plant-against-registration approach, the lower court found strong grounds to support the defendants’ non-infringement claim, even though the two parties’ plants look quite alike according to a court-designated expert’s report.
However, the Supreme Court favours the plant-against-plant approach. Its rationales are as follows:
Plants are living organisms that constantly reproduce and evolve. The registered traits represent the examination agency’s summary of observed characteristics from the specific variety sample submitted for evaluation in a PVR application. However, the trait registration system is not intended to restrict the variety to the registered traits, as natural post-grant evolution occurs in all plant varieties.
Different cultivation environments and conditions – such as soil properties, water supply, fertilisation, light, temperature, humidity, and climate – can cause variations in the traits of offspring plants from the same variety. If these variations do not occur at the genotype or genotype combination level and remain within the allowable range, the plant should still be considered the same variety and thus can be used as the basis for infringement comparison.
The appellant (Foreport Enterprises, the plaintiff) argued that ten years had passed since the chrysanthemum trait survey conducted for the PVR application filed in 2009 and that over this period, variances in climate, temperature, light, humidity, and other factors could each influence the actual appearance of the plant’s traits, making them not fully reflective of the registered traits, although it remains to be the same variety. Rather than solely comparing the defendant’s plant sample with the registered traits, the lower court should have further considered the above argument from the plaintiff and checked its veracity.
For the above reasons, the IPC Court’s decision was revoked and remanded. In its remand instructions, the Supreme Court emphasised that the IPC Court should specifically evaluate whether the differences between the plaintiff’s plant sample and the registered traits were due to different cultivation conditions, and whether the differences fall within the allowable range for the same variety.
Implications of the ruling
Without a doubt, the Supreme Court’s decision is good news for PVR holders, although how the IPC Court will address the issues highlighted remains to be seen.
Meanwhile, the Plant Variety and Plant Seed Act may provide a third comparison approach. Under Article 25 of the act, the PVR shall extend to “dependent varieties”; namely:
Varieties essentially derived from a variety protected by the PVR, and where such protected variety is not essentially derived from another variety;
Varieties not clearly distinguishable in comparison with a variety protected by the PVR; and
Varieties that require repeated use of a variety protected by the PVR in order to be produced.
How this approach will align with the methodology affirmed by the Supreme Court remains to be seen in future cases.
