A rose by any other name would smell as sweet, but it could infringe on an IP Right

William Shakespeare’s popular adage ‘A rose by any other name would smell as sweet’ is used to stress that the name of things do not affect what they really are. In the context of ‘love against all odds, ’ the English poet’s words make perfect sense, but regarding intellectual property, they have a completely different meaning.

Valentine’s Day is around the corner, with roses and a score of other cut flowers being the ultimate gift to express one’s feelings for a person.
At this time of year, it is tempting to dive into the worlds the great English poet created, his brilliant plots, the thoughts he expressed and the floriography describing the symbolic meaning attributed to various flowers.

IP protection for rose varieties is vital to reward the breeders for their work.

PBR infringement on Valentine’s radar

However, on a less romantic note, around Valentine’s Day, the ornamental horticulture industry traditionally pays extra attention to Plant Breeders´ Rights (PBR) infringement activities.

Besides the economic efforts and difficulties in obtaining and maintaining PBR, breeders face major challenges fighting against third-party infringement activities.

Although it might seem obvious, there is still a need to define what naming a rose entails.

Under the International Union for the Protection of New Varieties of Plants (UPOV) conventions and domestic legislation, the E Regulation 2100/94 plays a pivotal role. It states the scientific name of a variety is not the commercial name (either trademark or brand) of the same variety.

This means that a breeder could not challenge the use of his variety – as long as it is fair use, as explained below – but he could prevent third parties from using the related trademark/brand without his prior consent.

No matter if the flower (or the plant) is sold per se – as it happens for Valentine’s Day – or if it is the components of a complex product, for example, a perfume.

It would be easy to check the above by visiting a flower farm’s website and reading the description of the flowers and plants offered for sale: you will find the taxonomic information and the commercial one.

And the case law on this has been constant and consistent through decades. On the one hand, a breeder must not reserve the right to use the taxonomic information by registering it as a trademark. On the other hand, third parties are not allowed to exploit the commercial name owned by the breeder in their business.

Enforcing PBRs

Turning to the Plant Variety Protection (PVP) matter and leaving aside the Essentially Derived Variety (EDV), nobody could argue that breeders are allowed to enforce their PBRs against

(a) Unauthorised propagation: although this is the quintessence of the PVP itself, in the 1990s, this principle was challenged in more than one UPOV jurisdiction. In Italy, the Supreme Court of Cassazione, using judgement n. 6932/1995 clarified the scope of protection of a PVP. Despite the notorious case, Nadorcott is not the subject matter of this article; it should be underlined that the European Court of Justice expressly confirmed that the right to prevent unauthorised propagation is included in the scope of protection of a PVP.

b) Sales – or offer for sale – of unauthorised products: Theoretically, the principle is straightforward; its practical impact on a breeder’s business is less easily defined. As a matter of fact, to fall within the scope of protection of a PVP, you have to prove the illegitimate source of the flower/plant offered for sale. This could be illegitimate per se when the seller propagated without authorisation a plant/flower deploying a third-party PVP. However, the seller may be a mere marketer, and the source of the products is an authorised nursery that failed to pay the related royalty. In the latter case, we are dealing with an infringement, although proving it in the Courtroom will be more challenging. And this is the reason why we have swinging caselaw on this subject matter.

In a nutshell, a rose by any other name would smell sweet, but respecting PVP means paying respect to the efforts of scientists and entrepreneurs who developed a new variety. And, at the end of the day, it means doing our share for a more sustainable – all-round sustainable – economy.

This article was first published in the February 2024 issue of FloraCulture International.
Emanuela Truffo is a Partner at Studio Legale Jacobacci E Associati


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