CPVO: BOARD OF APPEAL DECISION on Cripps Pink and Cripps Red Varieties 

With a landmark decision on 12 January 2024, the Board of Appeal (BoA) for the Community Plant Variety Office (CPVO) of the European Union (EU), found the Office’s assessment of CRIPPS PINK/PINK LADY and CRIPPS RED/SUNDOWNER Novelty characterised by “lack of detail and clarity” and was “not in line with the legal principles of good administration, legal certainty and the requirement to state the reasons“.

Background of a long-running dispute

Cripps Pink and Cripps Red are the two legendary apple tree varieties bred in the late seventies by Dr. John Ernest Lane Cripps (sadly passed away on 10 May 2022), commercialised worldwide under the marks PINK LADY and SUNDOWNER.

Applications for the two varieties has been filed back on 1995 by the then Western Australia Agriculture Authority (now DPIRD or WAAA), the state agency employing Dr. Cripps and the whole team of researchers.

The validity of the Cripps Pink has been reviewed in earlier proceedings initiated before the CPVO on 2014 by Pink Lady America (“PLA”) and concluded after the General Court finally decided that the evidence admitted in the case-file was insufficient to demonstrate that when WAAA filed the Cripps Pink application before the CPVO, it had been aware of, or had consented to, sales made by the nurseries before 29 August 1989, this being the applicable novelty-bar-date according to art. 116 Basic Regulation of the EU Council No. 2100/94 (“BR”).

Of particular relevance in the outcomes of the case was the role played by art. 53(a) of Commission Regulation No. 874/2009 (“Implementing Rules Regulation” or “IRR”), according to which “Proceedings on nullity and cancellations as referred to in Articles 20 and 21, respectively, of the Basic Regulation may be opened by the Office when there are serious doubts as regards the validity of the title. Such proceedings may be initiated by the Office on its own motion or upon request.“

New Invalidation Action from TEAK ENTERPRISE PTY

A new petition was brought before the CPVO by the Australian company Teak Enterprise PTY, on the basis of new and important evidence intended to demonstrate WAAA’s  awareness that as a result of unrestricted disposals and sales of varietal constituents, either Cripps Pink and Cripps Red (the other variety fathered by Dr. John Cripps) were in free commercial practice in Australia years before the applicable Novelty bar date ub the EU, i.e. 29 August 1989.

Namely, that was the admitted reason for the lack of any IP protection in Australia on either the Cripps Pink PVR and the corresponding PINK LADY trademark for apples.

With its two ex-parte decisions on 17 May 2021, the CPVO dismissed TEAK’s actions arguing that the evidence (even the new ones) were not able to raise the “serious doubt” on Novelty, or to conduct any investigation by the Office on its own motion as per Art. 76 BR stating : “In proceedings before it the Office shall make investigations on the facts of its own motion, to the extent that they come under the examination pursuant to Articles 54 and 55. It shall disregard facts or items of evidence which have not been submitted within the time limit set by the Office”.

The CPVO’s decisions have been appealed by Teak on the basis of several pleas and arguments, namely: 1) wrong assessment of the facts and evidence leading to the wrong conclusions that there were no serious doubts as regards the validity of the Pink Lady PVR and Sundowner PVR; 2) failure to apply art. 53(a) of the Implementing Rules Regulation as Novelty proceedings had to be opened; and 3) failure to declare the Pink Lady PVR and the Sundowner PVR null and void in accordance with relevant law, in particular Article 20 of the Basic Regulation.

The analysis of the Board of Appeal

After a 7-hours of public oral hearing on 12 October 2023, the Board of Appeal issued its decision, stating from the outset that the Appellant’s further request to declare null and void the two varieties was perfectly admissible according to Art. 72 BR which tribute the BoA  “any power” which lies within the competence of the Office.

Then, the Board rejected all the positions from the Office and WAAA and, with the support of consistent case-law, fully endorsed the Appellant’s arguments that in the assessment of novelty-destructive disposal for commercial purpose “the term ‘consent ’in Article 10(1) of the Basic Regulation, includes implicit consent”.

With respect of the factual reconstruction of the case and the assessment of the evidence, the BoA found that CPVO failed “to conduct the assessments on the sufficiency and adequacy of the evidence in accordance with, amongst others, the principles of good administration, legal certainty, legitimate expectations, and the requirement to state reasons”, finding that the outcomes of the earlier decisions were based more on “an inclination or predisposition to arrive at a conclusion geared towards upholding conclusions drawn in similar assessments conducted in the past” than on an assessment “conducted in an impartial and objective manner”.

At the conclusion of an extremely precise legal analysis supported by precise reference to EU case-law, the Board concluded that in Novelty proceedings (our emphasis) “it would be important for the CPVO to…obtain relevant evidence, information and testimony, on its own initiative, before adopting a decision pursuant to Article 20 of the Basic Regulation. More specifically, the Board of Appeal notes that it would be highly beneficial for the CPVO to make reasonable and proportionate efforts to obtain information, evidence and testimony from individuals with experience and/or knowledge of the sales and other disposals before the novelty bar date for the two PVRs.”

On these grounds the Board of Appeal criticised the CPVO for not not having conducted any effort “to obtain and investigate, of its own motion, evidence and information in this regard”, especially given the massive amount of statutory declarations made under under penalty of prosecution in case of a deliberate false declaration.

Indeed, it was the absence of these investigative efforts by the CPVO the reason why the Board decided it would not be appropriate do adopt final decisions on the validity so to ensure “the CPVO assesses, in detail, the validity of the PVRs in question in the future, in particular as regards fulfilment of the novelty criterion“.

Based on the above findings, the BoA:

• annulled and set aside the CPVO previous decisions resolving not to declare the Pink Lady PVR or the Sundowner PVR as null and void, and not to open nullity proceedings concerning the Pink Lady PVR and Sundowner PVR;
• remitted to the CPVO, so to open nullity proceedings to assess whether the Pink Lady PVR and the Sundowner PVR should be declared null and void, including the express order that after opening the respective nullity proceedings, the CPVO conducts comprehensive assessments and investigations of all the relevant facts and evidence;
• ordered that after opening the respective nullity proceedings, the CPVO conducts comprehensive assessments and investigations of all the relevant facts and evidence, and that the CPVO: (a) Invites relevant individuals to provide information and evidence, regarding the sales and other disposals of the varieties; and (b) Takes proportionate steps to gather relevant information and evidence on the sales or other disposals of the varieties at the relevant time, in particular on the express and/or implied consent of the titleholder/breeder of those sales/disposals, and the knowledge of the sales or other disposals which the titleholder/breeder had or should have had of them.
• ordered the CPVO reimburse the Appellant the appeal fees relating to these appeal cases.

The full text of the Board of Appeal decision of January 12, 2024 can be accessed here.

Comments

The BoA decision, albeit being subject to appeal before the GC, is certainly able to alter the substantial interpretation of Novelty as well as the conducting of the “serious doubts” test by the CPVO, avoiding to configure Art. 53(a) of the IIR in a way which could even lead to impose on the nullity petitioner the onus of a probatio diabolica, with a negative impact on the duties of investigation set forth by Art. 76 of the Council Regulation (EC) No 2100/94 of 27 July 1994.

One of the most important aspect of this case is indeed the discretion of the CPVO in the interpretation of Art. 53(a) IIR, so “any evidence which indicates, or which may indicate, that a breeder has given implied/implicit consent to relevant sales or other disposals before the novelty bar date, is capable of raising doubts, including serious doubts, of the validity of a PVR. It also therefore follows, that the importance of that evidence cannot be discounted or undervalued by the CPVO, when the CPVO assesses the sufficiency of evidence adduced by an applicant to raise serious doubts according to Article 53a of the IRR.”

Given the universal nature of “novelty” and “distinctness” as fundamental principles in any member of UPOV area, the recent decision will have important effects also in the future, contributing to the uniform interpretation and assessment of internationally recognized requirements involving public-order interests.

WebLegal’s founder Roberto Manno has represented both the nullity applicants in the course of the PVR proceedings, and in the present one has been assisted by Atreya Choudhary, LL.M.

An independent IP boutique based in south Italy, Roberto Manno’s WebLegal was one the first IP firms practicing in the international PVR arena, providing advanced legal services in crucial areas of the agri-food law and dealing with high-level proceedings in the areas of #plantvarietyrights; #trademarks; #varietaldenomination; #internetlaw. Since 2010, WebLegal provides effective service of EU customs borders enforcement in respect of registered EU trademarks and CPVR plant varieties, having intercepted or destroyed + 70 containers for + 1000 metric tons of fruit sourced from plants illegally propagated outside the EU, where PVR rights have been secured.