The European Court has ruled in case C‑186/18 José Cánovas Pardo SL v Club de Variedades Vegetales Protegidas. This case has the following background:
Following an application lodged by Nadorcott Protection SARL on 22 August 1995 with the Community Plant Variety Office (‘the CPVO’), the CPVO granted it a Community plant variety right in respect of the Nadorcott variety of mandarin tree on 4 October 2004. An appeal with suspensive effect was brought against that decision before the Board of Appeal of the CPVO but was dismissed by a decision of 8 November 2005 published in the Official Gazette of the CPVO on 15 February 2006.
Since 2006, Pardo has cultivated a grove of 4 457 mandarin trees of the Nadorcott variety.
Geslive, on whom the management of the rights over the Nadorcott variety had been conferred, sent Pardo formal notice on 30 October 2007 demanding that, in the absence of the appropriate licence, it cease the cultivation of that plant variety.
On 30 March 2011, CVVP, to whom the management of those rights had been transferred with effect from 13 December 2008, sent Pardo a new letter demanding that, if it were cultivating some 5 000 mandarin trees of the Nadorcott variety, it cease that activity.
Having applied in November 2011 to the Commercial Court, Spain for preliminary measures for a declaration of infringement of the exclusive rights over the Nadorcott variety, CVVP brought two actions against Pardo, one for ‘provisional protection’ in respect of the acts of Pardo prior to the grant of those rights, that is, before 15 February 2006, the other for infringement in respect of acts after that date. In particular, CVVP sought a declaration of infringement of the exclusive rights over the Nadorcott variety from 15 February 2006 until the cessation of cultivation. CVVP also applied for an injunction that Pardo be ordered to bring its unlawful cultivation to an end, to remove and, if necessary, destroy any plant material of that variety in Pardo’s possession, and to pay it compensation in respect of such cultivation.
Having found that a period of time of more than three years had elapsed between the date on which the holder of the rights over the Nadorcott variety had identified Pardo as an unlawful cultivator of that variety, that is, at the latest by 30 October 2007, when Geslive gave formal notice to Pardo, and the date on which CVVP brought its action in November 2011, that court of first instance dismissed the action on the ground that the action for infringement was time barred under Article 96 of Regulation No 2100/94.
Following CVVP’s appeal against that decision, the Provincial Court of Murcia, Spain found that Pardo did not dispute either the cultivation of the trees of the Nadorcott variety or the lack of consent of the holder of the rights in that variety. That court decided that Pardo’s operations resulted in certain acts of infringement which were of an ongoing nature since the trees at issue were continuing to be cultivated. In addition, it held that Article 96 of Regulation No 2100/94 should be interpreted as meaning that the claims relating to those acts of infringement which took place less than three years before CVVP’s action was brought were not time barred but that those relating to acts of infringement which took place more than three years before the claims had been brought were time barred.
Accordingly, Pardo was ordered to pay EUR 31 199 for its acts of infringement and as appropriate compensation for acts performed without the consent of the holder of the Community plant variety right during the period of its provisional protection. In addition, Pardo was ordered to cease all acts of infringement.
Pardo brought an appeal on a point of law before the referring court, the Supreme Court, Spain against that decision of the Provincial Court of Murcia, challenging the latter’s interpretation of Article 96 of Regulation No 2100/94.
The referring court states that, according to the national case-law on matters of intellectual property, occasional acts of infringement must be distinguished from ongoing acts. In the case of the latter, the period of prescription is extended for as long as the act of infringement continues. That court asks whether such case-law can be applied to the rules on prescription set out in Article 96 of Regulation No 2100/94 and, in particular, whether all claims relating to acts of infringement are time barred on the ground that the holder of the Community plant variety right brought his or her action more than three years after becoming aware of those acts of infringement and of the identity of the party liable for them or if only those claims relating to acts of infringement which took place more than three years before the action was brought are time barred.
In those circumstances, the Supreme Court decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1) Is an interpretation according to which, provided that the period of three years has elapsed since the holder, once Community protection of the plant variety right was granted, became aware of the infringing act and the identity of the party liable, the actions provided for under Articles 94 and 95 [Regulation No 2100/94] would be time barred, although the infringing acts were continuing until the time the action was brought, contrary to Article 96 of [that regulation]?
(2)If the first question is answered in the negative, is it to be considered that, in accordance with Article 96 of [the regulation], the limitation period operates only in respect of infringing acts committed outside the three-year period, but not in respect of those taking place within the last three years?
(3) If the answer to the second question is in the affirmative, in such a situation could the action for an injunction and also for damages succeed only in relation to those latter acts taking place within the last three years?’
The Court’s decision:
1. Article 96 of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights must be interpreted as meaning that, irrespective of the ongoing nature of an act of infringement of a protected variety or of the date on which that act ended, the three-year period of prescription set out in that provision in respect of claims pursuant to Articles 94 and 95 of that regulation starts to run from the date on which, first, the Community plant variety right was finally granted and, second, the holder of the right had knowledge of the act and of the identity of the party liable.
2. Article 96 of Regulation No 2100/94 must be interpreted as meaning that claims pursuant to Articles 94 and 95 of that regulation in respect of a set of acts of infringement of a protected variety brought after more than three years have elapsed are time barred only from when, first, the Community plant variety right was finally granted and, second, the right holder had knowledge of each individual act forming part of that set of acts and of the identity of the party liable for them.