Italy is inching towards full PBR enforcement

Plant Breeders’ Rights (PBR) are pivotal to horticultural businesses. They belong to the Intellectual Property Rights (IPR). PBR are close to patents, but strictly seen are two distinct legal concepts that protect different types of intellectual property. So, what are they? And how should they be enforced?

Starting from scratch, there is no specific legal framework for enforcing PBR. Therefore, practitioners and courts must adapt IPR toolkits, such as patents, to PBR, which is a difficult task.

Many comments have been delivered on the Nadorcott saga. So, no further comments are needed here. However, a few recent decisions made by Italian courts might be of some interest to define new strategies for PBR enforcement.

SUPPLY CHAIN LIABILITY

In June 2023, the Court of Milan – IP Chamber issued one of the first judgments – very likely the first of its kind – stating the liability for infringement of the whole supply chain, starting from the department store and going back in the chain, passing through the intermediaries, until reaching the grower.

So far, the mainstream case law has been blaming growers, relying on the impossibility of intermediaries and department stores to check the merchandise supplied by growers.

For the first time, an Italian court stated that all the professional members of a supply chain should be considered liable for the PBR infringement.

The court argues that all supply chain members, directly or indirectly, contributed to the infringement itself. In a nutshell, if the grower is liable because he knows (or should have known) that there are PBRs related to the plants he propagated, the other members of the supply chain are liable as they perpetrated a sort of contributory infringement.

More often than not, department stores impose – or at least kindly require – to get generic references and denomination for merchandise to join their internal Product Management System (PMS). To safeguard against a liability that turns into accounts for profit damages compensation and legal fees reimbursement.

For the first time, an Italian court stated that all the professional members of a supply chain should be considered liable for the PBR infringement. Photo: Campo dei Fiori, Rome.

WHY IS THIS GOOD NEWS?

In the past, the Court of Genoa – IP Chamber made a first step towards a ‘supply chain liability’, issuing a restrictive order preventing department stores and wholesale dealers from further selling the infringing products.

However, no damage compensation or account for profit was granted. That is why the Milan decision is good news: only common knowledge and awareness of the need to do business in the full respect of the whole supply chain IPRs, including PBRs, could lead to a more mature – and profitable – market.

A SIGNIFICANT STEP TOWARDS FULL PBR ENFORCEMENT

Furthermore, granting damages compensation means making a step towards the full enforcement of PBRs. As stated before, PBRs are close to patents, although they are not a patent as we are used to thinking of, at least in the EU legal framework.

The distinction of being ‘close but different’ has often kept them out of the A-list of the Intellectual Property Rights League. Now, they see the infringing supply chain, which was once treated as a ‘full’ patent, being treated to their detriment. This is a major issue.

Turning to the case law related to interim relief proceedings, what seemed like a novelty with great expectations a couple of years ago has become a consolidated case law. The Court of Bari – IP Chamber confirmed that the validity of drone investigations can be used as evidence and has granted a few more pre-trial investigation orders.

STAY TUNED!

Finally, but importantly, the Supreme Court of Cassazione will take a position on the Nadorcott principles in Spring 2024. Since the well-known decisions of the European Court of Justice (ECJ) have been released, a series of lawsuits have been affected by interpretations of the ECJ’s words.

In an interlocutory order made in October 2023, the Court summoned a discussion hearing focused on granting the Court the legal authority to issue a judgment, thus limiting the variations on the theme that might lead to full uncertainty on the scope of PBRs.

I hope that the Court of Cassazione will confirm the paramount importance of PBRs in the horticultural and agricultural industries; stay tuned!

This article was first published in the November 2023 issue of FloraCulture International. The author, Emanuela Truffo is a Partner at the Italian law firm Studio Legale Jacobacci E Associati.