CHALLENGE TO THE PLANT BREEDERS' RIGHTS
CANNA PHASION / TROPICANNATM / DURBAN
"Phasion" is the registered name of the variety of canna that is marketed as Tropicanna (TM). In the UK it is widely known under the name 'Durban'. In South Africa it has been known by other names, most commonly simply by its description, 'Variegated Pink Stripe'. It is perhaps the most spectacular variety of canna, with plum-coloured foliage boldly striped in pink, topped with bright tangerine-orange flowers. It is undeniably the most commercially successful canna in history.
Canna 'Phasion' is the subject of Plant Breeders' Rights in various countries. These rights have led to bitter struggles and legal disputes in two jurisdictions, Europe and South Africa. These matters have been legally decided, and the rights have been declared "null and void" in both these jurisdictions, though they remain in force in other countries.
Keith Hayward, nurseryman and holder of the UK Plant Heritage National Collection of Cannas succeeded in overturning the Plant Breeders' Rights in Europe. The full story is told below.
PLANT BREEDER'S RIGHTS IN EUROPE
Firstly a word of explanation. Anyone who breeds or discovers a new plant variety may apply for plant breeders' rights, and if these rights are granted, then they they own the full commercial rights to this variety. They can control how it is sold, and they can require a royalty, ie a payment, on all sales. Each country has its own ways of protecting plant breeders' rights. In South Africa it is the PBR (ie Plant Breeders' Rights), in the USA it is the Plant Patent, and in the European Community, it is the CPVR (Community Plant Variety Right). All these national regulations conform to an international set of rules known as the UPOV Convention. According to this convention the rules in each country are essentially the same.
The plant breeders' rights to 'Phasion' were applied for and granted in various countries of the world, including South Africa (where the variety was originally discovered), USA, Europe, Australia. The rights in South Africa date from 11 August 1994. The rights in Europe date from 1 November 1997. This variety is marketed word-wide by the company Anthony Tesselaar International, which is based in Melbourne, Australia.
Canna Durban was first introduced into the UK in 1994 by nurseryman Brian Hiley and it very soon became very popular. Some gardeners and nurserymen who are interested in cannas were aware of the introduction of this new and spectacular variety. Some people were therefore very surprised when the same variety, but now protected by Plant Breeders' Rights, was introduced in the UK in 1998 as 'Phasion'/'Tropicanna' by Tesselaar International.
A fundamental principle of the granting of plant breeders' rights is that the variety must be new, but in this case rights had been granted to a variety which was already well known. Therefore, the application for rights in Phasion should have been rejected because the variety was not a new variety.
Two nurserymen (Bob Brown of Cotswold Garden Flowers, and Terence Bloch (who had a specialist nursery in London) separately protested to the office of plant breeders rights that 'Phasion'/'Tropicanna' appeared to be the same as the pre-existing variety 'Durban', but they did not pursue their protests or present any evidence.
It fell to Keith Hayward to pursue this objection and challenge the rights to 'Phasion'. His decision was based on his strong feeling that someone should challenge these rights, and if no-one else would do it then he would. He also felt that, as the recently appointed holder of the NCCPG (Plant Heritage) National Collection of Canna, he had a moral duty to challenge the rights, although his action was taken on his own initiative and completely independently of Plant Heritage.
This challenge was a daunting task since the rights were expected to be vigorously defended. The rights were in the name of Keith Kirsten's (PTY) Ltd of South Africa. Keith Kirsten is a nurseryman, businessman, and TV gardening personality in South Africa. Keith Kirsten was supported by the company who market this variety wordwide, Anthony Tesselaar International of Australia. Keith Hayward was pursuing this legal action as an individual and without being legally represented.
The formal procedure for nullification began when Keith Hayward contacted the European Community Plant Variety Office (CPVO) in France and was informed that he should prepare a petition, ie a formal legal request for the rights to be declared null and void, which should contain his supporting reasons and evidence. This petition was duly prepared, and a bound copy comprising some 100 pages was despatched to the CPVO on 23rd July 2002. In the detailed exchanges which followed, other submissions were made by both sides.
It might be wondered why Mr Hayward decided to pursue this case alone. The facts are that he tried to get others to join him in this challenge, but nobody wished to get involved. the Royal Horticultural Society (RHS) wrote that they would remain strictly neutral in legal matters such as this (refence: a letter from Director of Horticulture at Wisley, Joyce Stewart). He had already decided not to formally involve the NCCPG, although they knew what he was doing. He approached the horticulture trade twice for assistance (both the Horticulture Trade Association and major compainies within the hoticulture trade), and both times they rejected his request (see below). Also, he had discovered from the CPVO that there would be no cost to him in submitting a petition, and no costs would be awarded against him if the case failed. He also decided to to the legal work himself. So although this challenge would take time, it would not incur significant costs.
The petition relied on evidence provided by individuals and organisations who had been growing canna Durban before the date of the CPVR Application, or otherwise had contributions to make. Foremost among these were Pieter Breugem the South African nurseryman who was at that time fighting his own case over Phasion in South Africa, and Ian Cooke, canna specialist and author of a book on cannas, who was one of the people who had introduced canna Durban to the UK (he separately introduced the variety to the UK from South Africa one year after Brian Hiley). Other individuals who willingly provided valuable written evidence included: Christopher Lloyd and Fergus Garrett of Great Dixter, Bob Brown of Cotswold Garden Flowers, Paul Spracklin of Oasis Garden Design (who had exhibited the variety Chelsea Flower Show in 1996), Anne Wright of Country Life Magazine (who provided a copy of issue dated September 1996 in which Canna Durban was mentioned by Christoher Lloyd), Geof Lovell (gardener), Terence Bloch (nurseryman).
The person who was the first to import this variety into the UK, Brian Hiley, would not provide written evidence, though he contributed valuable verbal recollections, including that he had early exhibited this variety at the Hampton Court Palace Flower Show, though he could not remember the year.
The Royal Horticultural Society (RHS) also initially refused to provide relevant information from their records. In particular they refused to confirm the entry in the Wisley Acquisitions Database that Canna Durban was acquired by Wisley Garden from Brian Hiley on 1 November 1994. Mr Hayward had discovered this fact from the Botany Department at Wisley, and it was vital evidence, but the RHS said that it could not be used without formal authorisation, and this they refused to give. Under some pressure from Mr Hayward, they relented on this point and wrote a letter confirming this garden acquisition, which was used in evidence.
Other areas of the RHS and individuals within the RHS were more helpful. The RHS Floral Trials Sub-Committee made public their opinion that 'Durban' was indistinguishable from 'Phasion', and this opinion was published in the RHS "The Garden" magazine, which was used in evidence.
The RHS Lindley Library (both the London and Wisley branches) was an invaluable source of archived evidence, indeed most of the submitted evidence was obtained from this source, including old plant catalogues, garden magazines, RHS Proceedings, back copies of 'Plantfinder', etc. In particular, Keith Hayward was truly overjoyed when the Chief Librarian, Brent Elliott, discovered an original photographic slide of 'Durban' in the formal RHS archives, dating from the Hampton Court Palace Flower Show of July 1995, where Durban appeared on the Gold Medal winning stand of Brian Hiley. This stand also won the Tudor Rose Award as the best stand at the show. Even the label 'Durban' could clearly be seen and read. This enabled Keith Hayward to make the claim that Durban was the star attraction on the top award winning stand of the biggest flower show in the world, some 3 years before the date of the application for PBR in Europe, and surely there could be no clearer evidence of 'Common Knowledge' than this". Mr Elliott authenticated this slide, and at the subsequent legal hearing, Keith Hayward requested a slide projector in order to show this slide in his evidence.
Keith Hayward approached the retail trade on 2 occasions for support, but both times such support was refused. The first occasion was when he contacted several big retailers when preparing his petition, to see if they would rally round and contribute to DNA testing of Durban and Phasion, and they all refused. He also asked the Horticulture Trades Association (HTA) for such support, and they refused. The total cost involved was £720. A director of Hillier (Mr J Woodhead) stated in reply "I could not justify such expenditure to my board"
He contacted the trade again when he began to face complicated legal issues. He was not himself legally represented yet was facing a strong legal team (led by PBR legal consultant John Ardley OBE). He made contact with the Chief Executive's office of a number of the major retailers and asked to speak to the Chief Executive's PA. He explained the problem, that he was in a strong position, but he needed access to free specialist legal advice. In each case he asked the PA for the name of the Chief Executive, or other person within the organisation to whom he should make contact. He then sent a detailed fax to that person personally. B&Q (Sally Clifton, Assistant Company Secretary) wrote back "B&Q does not intend to become involved in this matter". Wyevale (Chief Executive) wrote suggesting others who may be able to recommend a lawyer but did not offer assistance themselves. The following directors of major retailers and suppliers did not reply to the fax even though it was addressed to themselves personally: Winchester Growers (Dr Gordon Flint), Hilliers (Mr Frankovsky), Notcutts (Paul Masters). Once again he also asked the HTA for free legal advice which they provide to the horticulture trade, but they refused on the grounds that Keith Hayward was not at that time a member of the HTA. The sole offer from within the trade to provide some support came from Mr Julian C Burton when he was a director of Notcutts, but he was no longer employed by Notcutts when such help was needed, although he provided a letter which was used in evidence. There was a sequel to this correspondence: in July 2005, Keith Hayward wrote to Sally Clifton, Company Secretary of B&Q, informing her that the case had been won and reminding her of their refusal to assist. No reply was received.
During the darker days of the legal wrangling, Keith Hayward happened to meet a director of Tessellar International while visiting the RHS Canna Trial at Wisley Garden (which happened to be running at the same time as this legal dispute). They were introduced by a member of the RHS staff. Tessellar offered to allow Keith Hayward to withdraw from the case, so save him later embarrassment when the petition was rejected! Keith Hayward declined this invitation.
A legal hearing was held at the CPVO office on 1st October 2003 at which both parties were requested to attend. The CPVO is located in Angers, France. Angers is a beautiful town in the Loire valley, and the office of the CPVO is an old chateau situated in the town centre (see photo). In the foyer of the building were flags of all countries of the EU. Keith Hayward noticed that the flag of the UK was mounted upside down, which is an international sign of distress! Prior to the meeting both parties to the case were kept in separate waiting rooms each accompanied by a "minder", and led into the meeting to take seats on opposite sides of a large table.
The meeting was chaired by Mr Bart Kiewiet (President of the CPVO). Other members of the CPVO at the meeting were Jose Elena (Vice President), Martin Ekvad (Head of Legal Unit), Ton Kwakkenbos (Ornamentals Expert), Veronique Doreau (Assistant to the Legal Unit). The Applicant and owner of the rights Keith Kirsten (South Africa) was present and was represented by legal consultant John Ardley of the London firm of Patent Agents D Young and Co. He was assisted at the hearing by lawyer Anne Mallalieu, a partner at D Young & Co; Tesselaar International were represented by director Rodney North. Petitioner Keith Hayward attended and was accompanied by his wife Christine and by his witness Pieter Breugem of Weltrevrede Nursery, Stellenbosh, South Africa. Also present was Mr Breugem's wife Elize.
At this meeting, the CPVO presented their understanding of the issues. They then invited both parties to present their case. Mr Hayward presented his case that the variety was already well known in the UK prior to the application for rights in Europe. His witness, Pieter Breugem presented supporting evidence that Mr Kirsten was not the first person to discover the variety in South Africa, because it was already well known in South Africa before Mr Kirsten claimed to have discovered it. The CPVO then subjected both parties to questions. In particular they questioned Mr Kirsten in detail about the precise circumstances in which he first became aware of the existence of this variety in South Africa. He explained how he first discovered it growing in the garden of a Mr Theunie Kruger at Bethal in South Africa. He had been staying with Mr Kruger while on a lecture tour and he had noticed this canna in the garden. Mr Kruger had given him a bag of rhizomes to take away, and told him he could do with them what he wished. At the conclusion of the meeting, the President said that the decision of the CPVO would be announced within 2 months.
The result was announced on 6 November 2003. On that date, Martin Ekvad, Head of Legal Unit at the CPVO, faxed the result of this petition to interested parties.
The decision was that the plant breeders rights in Europe were to be declared null and void. The full decision can be read in the following document, which was issued by the CPVO as a PDF file: phasion.pdf.
This was a vindication for the Petitioner. However, the reason for the decision was as surprise because it was unexpectedly short. It was simply that the rights were declared null and void because the applicant for the rights had not personally bred or discovered the variety. That is, Keith Kirsten had not discovered the variety in Theunie Kruger's garden in South Africa as he claimed to have done, because Theunie Kruger already knew it was there, and so there could have been no act of discovery by Mr Kirsten. Only the person who actually breeds or discovers a variety is entitled to apply for rights. Therefore all the evidence that the Petitioner had painstakingly collected in the UK on the prior availability and publicity regarding this variety in the UK was not needed because the decision was based on a previous event in South Africa!
This was a clever and elegant decision, which went to the heart of the case. At the time he was preparing his petition, all Mr Hayward knew was that Phasion was not a new variety, and so he collected all the evidence that he could on the prior existence of this variety to prove that it was not new. The committee of the CPVO ignored all that evidence and simply addressed the reason why it could not be a new variety. The reason was that the Applicant had claimed to be the first person to discover it, when in fact he was not the first person to discover it, and so it was not a new variety when he first saw it.
Although the decision was a vindication of the action taken by the petitioner, the decision was not brought into effect at that time because the Applicant had the right to appeal.
The Applicant formally submitted an appeal to the Board of Appeal of the CPVO in February 2004. The CPVO forwarded details to Mr Hayward for his response. The Board of Appeal of the CPVO rejected this appeal in a verbal announcement made on 16 December 2004.
The written report on the reasons for the rejection of the appeal were published at the beginning of February 2005. This may be found on the website of the CPVO, which is www.cpvo.eu.int Alternatively, open the file appeal.pdf. It can be seen that the Board of Appeal agreed with the Office, that the Applicant had not discovered the variety himself because it had already been discovered when he first saw it.
The Applicant then had the opportunity to appeal to the European Court of Justice, but declined to do so. No further appeal was possible.
The rights finally become null and void on 15 February 2005 when the decision of the Board of Appeal was formally published in the official Gazette of the CPVO. The meaning of the term "Null and Void" is that the situation is equivalent to the rights never having existed.
The procedure to overturn this CPVR took 2 years 7 months from the date of the original submission of the legal petition to the President of the CPVO (22 July 2002). It might be wondered why this case took such a long time to process. The reason is that the procedures including the timeframe are largely laid down by statute; and legal processes move painfully slowly.
But the result of this successful challenge to this PBR is that canna 'Durban', the most sucessful commercial canna variety in history, can now be freely sold throughout the EU without commercial restrictions or payments of royalties. Similarly it is free of commecial restrictions in South Africa, due to the parallel case there. However, commercial restrictions still exist in the USA, and other countries where a PBR or Plant Patent is in force. Such a challenge should be easy in those countries, given the precident in Europe, but nobody has bothered to do it.
LITIGATION IN SOUTH AFRICA
To briefly summarise this case. Canna Phasion was registered for Plant Breeders Rights in South Africa in August 1994 by Keith Kirsten (more precisely, by one of his companies: Keith Kirsten's PTE Ltd). Pieter Breugem, a nurseryman in SA (Weltrevrede Nursery, Stellenbosh) sold 3000 rhizomes of this canna to a customer in Belgium without paying the due royalties. He didn't pay the royalties because he felt that Keith Kirsten shouldn't have the rights, because he knew that Phasion was commonly available before Keith Kirsten applied for the rights. He was sued by Keith Kirsten for infringement of the PBR.
The case was heard in the South Africa High Court by judge J Desai in 2001 and the judgment was given in favour of Keith Kirsten. Keith Kirsten was awarded damages and costs. Mr Breugem's costs to defend this case were some Rand400,000, ie about £40,000.
Even in spite of the costs he had already incurred, Pieter Breugem applied for leave to appeal, but his application was refused by judge Desai.
By this time Keith Hayward's petition in Europe for the revocation of the rights in Europe was gathering pace and nearing a conclusion. Pieter Breugem, and the other nurserymen in South Africa, were now not alone in voicing an objection to the rights in 'Phasion'.
Pieter Breugem persisted with his case for an appeal, and made the point that this matter now had international implications because of the challenge to the right in this variety in Europe. He rightly felt that the court in South Africa would take notice of the parallel case in Europe. He was duly granted the right to appeal to the Supreme Court of Appeal of South Africa.
This appeal was heard on 11 November 2003 by a panel of 5 judges led by judge LTC Harms. It is interesting to note that judge Harms is an expert in intellectual property rights unlike Judge Desai who heard the original case. The hearing of this appeal was just a few days after the success of the petition in Europe had been announced (6 November) regarding the same plant variety. The decision in Europe and the reasons for it were made known to the appeal court by Pieter Breugem's lawyers.
It was announced on
Friday, 28th November 2003 that Pieter Breugem's appeal to the Supreme
Court of South Africa had been successful. The
appeal court ruling is quoted from the judgment as
The full appeal court ruling can be read at the website of the Supreme Court of Appeal of South Africa where the text of judgments are posted. A copy is available here: appeal.doc
It can be read that the appeal judges in South Africa took the same view as the CPVO in Europe, ie that the applicant for plant breeders rights in South Africa was not the person who discovered the variety, which is an essential requirement in any application for PBR.
It can also be read that the application for rights was not correctly conducted according to the proper procedure; the variety did not qualify for rights; the judge in the lower court didn't listen to the witnesses; and so on. The Registrar of PBR, Martin Joubert, is criticised for accepting the application, and for not following the correct procedures.
In parts the judgment is quite strongly worded. "The sorry tale of corporate and administrative bungling does not end here . . . ." "It does not enhance the image of a country that wishes to become a major economic force if, in spite of binding international obligations and parliamentary laws, some state department . . . . "
It all makes interesting reading, particularly to Pieter Breugem and the South African nurserymen who supported him in his struggle. Their stand has now been fully vindicated. There can be no further appeal in South Africa.
APPLICATION FOR THE REVOCATION OF PBR IN SOUTH AFRICA.
Many nurserymen in South Africa were not happy with the initial judgment in the Kirsten/Breugem case, but they are delighted with the result of the appeal.
They say that this variety was well known for many years before the PBR was applied for. They say they have traced the origin of this variety to Zimbabwe in the 1950's, and they have traced the progress of the variety by various stages from Zimbabwe to Mr Kruger's garden in Bethal in South Africa, where it was first seen by Mr Kirsten, and incidentally to a nursery in Durban SA, from whence it came to Brian Hiley's Nursery in the UK. They claim that Keith Kirsten was not entitled to get PBR for this variety, because he didn't breed it, he wasn't the first to discover it, and it was already well known when he applied for the PBR.
But it goes beyond canna 'Phasion'. These nurserymen are concerned about a number of other plant PBR that have been granted by the Registrar in South Africa which they say were not bred or discovered by the person to whom the rights were granted.
An independent "Concerned Nurserymen's Investigation Group (CNIG) was formed to take these issues to the Registrar of PBR. On 18th August 2002 they submitted a formal objection to Martin Joubert, the SA Registrar of Plant Breeder's Rights, for the revocation of Phasion PBR.
This objection was not acted on, in spite of intense pressure on the Registrar from the CNIG.
Now that Pieter Breugem's appeal has been successful and the PBR for Phasion have been declared to be not valid by the SA Supreme Court of Appeal, and particularly taking into account the words of the appeal court judge, it was interesting to see what action was taken by the Registrar in this matter.
Surprisingly, and disappointingly, the Registrar of PBR in South Africa has interpreted this appeal judgment literally. That is, he has terminated the PBR of Phasion from the date of the appeal court ruling, 28 November 2003. This can not have been what the appeal judge intended, because it retains the PBR in force prior to 28th November 2003. The Registrar has therefore created a paradox under which Pieter Breugem continues to be guilty of infringement because of his sales in 1999, yet it is precisely such infringement that the appeal judge decided did not happen. Clearly the Registrar is at fault in the way he has interpreted the appeal court ruling. He should have declared the PBR to be "null and void", that is, the situation should be restored to the position where the PBR never existed. This is how the regulations have been interpreted by the President of the CPVO in Europe. It is also clearly the procedure that should be followed according to the UPOV Act. It looks like the appeal court Judge's remarks about administrative bungling continues to apply.
MACTRO alias TROPICANNA GOLD (TM)
The Tesselaar organisation later applied for rights in Europe in respect of the canna variety MACTRO, which is marketed under the name Tropicanna Gold. This supposedly new variety would appear to bear a strong resemblance to the pre-existing variety Bethany which won an award in the RHS Canna Trial of 2002. Mr Hayward registered an objection to the grant of rights in Mactro on the grounds that the variety is not distinct when compared to Bethany. Mr Hayward lost this case. This is another story which will be told in due course, and which, in his opinion, does not reflect well on the CPVO.
Newspaper reports in the UK
Horticulture Week 13 November 2003, page 3 "Legal battle over Canna variety"
RHS "The Garden" magazine, December 2003, page 896. "Plant Breeding: Rights Revoked by Europe".
RHS "The Garden" magazine, February 2004, page 80. "Legislation: Case Closed?"
Online Newspaper reports
Newspaper reports on the ruling by the CPVO on the Petition regarding Plant Breeder's Rights in Europe
"The Star" (Johannesburg)
"Cape Times" (Cape Town) http://www.itechnology.co.za/index.php?click_id=14&art_id=vn20031112042159354C663849&set_id=1
Newspaper reports on the result of the appeal to the Supreme Court of Appeal in South Africa:.
The Star (Johannesburg) 1 December
Cape Argus (Cape Town) 3 December
Judgments and decisions:
CPVO: Decision No A4. To declare
null and void the right in canna 'Phasion'
Supreme Court of Appeal of South Africa: Phasion
Regulations in Europe (Regulation 2100/94)
Regulations in South Africa:
The international rules to which national rules
conform: (The UPOV act of 1991).
CPVO: European Community Plant Variety
UPOV. The organisation which coordinates
international regulations for plant breeders rights.
US Office of Plant Patents
Supreme Court of Appeal of South Africa.
Keith Kirsten - The holder in the rights
of canna Phasion
Anthony Tesselaar - The
company which markets canna Phasion
John Ardley - Procedural
representative of the holder
D Young & Co Solicitor/Patent Agent of
Catherine Mallalieu Solicitor acting for
Canna 'Phasion', TropicannaTM,
Relaxing in a French Brasserie after the legal
hearing 1 October 2003