Seminar on Enforcement of Plant Variety Rights

Warsaw 11-12 May 2006

Polish legislation on enforcing plant variety rights

Paweł Gała

Law adviser

Polish Seed Trade Association

  1. Origin of the Polish system of protection for plant varieties

The Polish national system of protection for exclusive plant variety rights is based primarily on the provisions of the Law of 26 June 2003 on the legal protection of plant varieties. This law contains a number of provisions governing the procedure for granting a variety right, the extent of the protection afforded by such a right, and the commercialisation thereof, and also covers the termination or loss of an exclusive right.

In addition to the Law on the legal protection of plant varieties, other rules are of particular relevance to the protection of exclusive variety rights, in particular:

  • the Law of 26 June 2003 on seeds which governs the sphere of public law covering the registration of varieties and also the production, assessment, inspection and marketing of propagating material of plant varieties;
  • the Law of 23 April 1964, the Civil Code, in the section containing the general provisions governing compensation claims arising from tort or delict;
  • the Law of 17 November 1964, the Code of Civil Procedure, governing court jurisdiction and the rules of procedure in cases relating to compensation for damage caused as a result of tort or delict; and
  • the Law of 24 August 2001, the Code of Procedure for Administrative Offences, governing court jurisdiction and the rules of procedure in criminal cases concerning infringement of exclusive variety rights.

In certain situations it may be necessary to rely on other special provisions, such as the Law of 30 June 2000 on industrial property rights, at least where the denomination of the protected variety is a trade mark.

It should be noted that the Polish system of protection for exclusive plant variety rights applies only where a particular variety is not protected at Community level. In that case a national exclusive right is not granted or, if it has been granted earlier, it is suspended.

  1. The scope of an exclusive variety right

In the Law on the legal protection of plant varieties the scope of an exclusive right is defined primarily by Article 21 thereof. Under that article, an exclusive right includes the right to engage in the following activities in relation to propagating material of the protected variety:

  • production or multiplication;
  • conditioning;
  • offering for sale;
  • sale or other forms of disposal;
  • exportation;
  • importation; or
  • storage.

Furthermore, under Article 22 of the above law, an exclusive right also includes the right to engage in the above-mentioned activities in relation to:

  • harvested material and products produced directly from such material where the breeder has had no opportunity to exercise an exclusive right in relation to the propagating material of the protected variety;
  • propagating material of ornamental and fruit plants where it is re-used for commercial purposes as reproductive material for the production of ornamental plants, cut flowers or propagating material of trees, shrubs and perennials;
  • a derivative variety which is discovered or produced from an initial variety which is not a derived variety;
  • a variety which does not differ clearly from the protected variety;
  • a variety in whose case the variety protected by an exclusive right has to be used repeatedly for the production of propagating material.

Under Article 9(5) of the Law on the legal protection of plant varieties, protection of an exclusive variety right includes its denomination.

An exclusive variety right is a right limited in time. Under Article 27 of the above law, an exclusive right is effective from the date on which the decision granting it is given and lasts for:

  • 30 years – in the case of vine, tree and potato varieties;
  • 25 years – in the case of other varieties.

However, the denomination of a variety is protected from the date on which the exclusive right is granted and for as long as the propagating material of that variety is marketed.

Article 14, under which a breeder who has filed an application for the grant of an exclusive right enjoys a provisional exclusive right from the date on which the information relating to that application is published in the official bulletin, has particular relevance in defining the scope of the protection for an exclusive plant variety right under the Law on the legal protection of plant varieties. To protect his right the provisions concerning an exclusive right are applied mutatis mutandis.

III.Infringement of an exclusive variety right

1. The Law on the legal protection of plant varieties does not list the activities which constitute an infringement of an exclusive variety right in the same way as, for example, Article 94 of Council Regulation (EC) No 2100/94 on Community plant variety rights. However, in setting out the scope of criminal liability, Article 37 of the national law of 23June2003 uses the comprehensive clause ‘infringement of an exclusive variety right’. When placing interpretations on the provisions of the law it is necessary to regard as such an infringement the engagement by any entity, without the authorisation of the breeder entitled, in any of the activities covered by Article 21 of the law, that is to say:

  • production or multiplication;
  • conditioning;
  • offering for sale;
  • sale or other forms of disposal;
  • exportation;
  • importation; or
  • storage

of propagating material of the protected variety.

This category must also cover any infringements of a breeder’s personal assets connected with an exclusive variety right. The circulation of false opinions on the economic value of a variety protected by an exclusive right can constitute an infringement of such assets.

In addition, under Article 37 of the Law it is necessary to regard the following as an infringement of an exclusive right:

  • the designation by the denomination of a variety protected by an exclusive right of propagating material or harvested material of another or unknown variety;
  • failure to provide, at the request of the breeder whose variety is protected by an exclusive right, written information on the quantity of propagating material of the protected variety used without authorisation by the breeder;
  • failure to pay the breeder a fee for use of propagating material of a protected variety.

2.However, it should be noted that the following uses of propagating material of a variety without the breeder’s authorisation do not constitute an infringement of an exclusive plant variety right:

  • use for personal, non-commercial purposes;
  • use for experimental purposes;
  • use to produce new varieties (save for derived varieties, varieties which do not differ clearly from the protected variety, and varieties in whose case the variety protected by an exclusive right has to be used repeatedly for the production of propagating material), provided they are not used for commercial purposes.

In that respect it should be stressed that under Article 25 of the Law any person who uses propagating material of a variety protected by an exclusive right is required, at the request of the breeder holding the exclusive right to that variety, to provide him with written information on the quantity of propagating material of the protected variety and to pay the breeder a fee equivalent to the licence fee for use of the exclusive right to that variety.

Use as propagating material by agricultural landowners, without the breeder’s authorisation, of harvested material of protected varieties (save for hybrid and synthetic varieties) of the following species likewise does not constitute an infringement of an exclusive variety right:

  • common wheat;
  • rye;
  • barley;
  • triticale;
  • oats;
  • winter rape;
  • potatoes.

Agricultural landowners are required (save in the cases set out in Article 23 of the law) to pay the breeder a fee in that respect which must be less than the amount of the licence fee for that category of propagating material. In addition, both agricultural landowners and entities providing services involving the processing of harvested material into propagating material are required to submit to breeders or organisations thereof written information on the quantity of propagating material obtained from the harvested material. Article 23 establishes the institution of ‘agricultural exemption’ on the basis of the Polish system of protection for exclusive variety rights.

  1. Legal instruments for protecting exclusive variety rights

Amongst the legal instruments for protecting exclusive plant variety rights it is possible to single out the following in the Polish system of protection for plant varieties:

  • instruments of civil law;
  • instruments of criminal law;
  • instruments of administrative law.

1.The Law on the legal protection of plant varieties does not introduce special instruments of civil law to protect exclusive variety rights. Therefore, the general provisions of the Civil Code and the Code of Civil Procedure apply also where an exclusive variety right is infringed.

A. Procedural instruments

Note should be taken first of Section II of the Code of Civil Procedure, which lays down a number of provisions on security. Under Article 730(1) of the Code of Civil Procedure:

‘In any civil case to be heard by a court of law or court of arbitration it shall be possible to request the provision of a security.’

Thus, a security may also be requested by the breeder entitled by virtue of an exclusive variety right.

A court may provide a security both:

(1)during proceedings and

(2)before the date on which proceedings are brought.

(1). When requesting the provision of a security by the court, the breeder must provide prima facie evidence of his claim arising from a potential infringement of his exclusive right or a legal interest in the provision of a security. A legal interest in the provision of a security exists where the absence of a security makes it impossible or seriously difficult to enforce the judgment given in a case or otherwise makes it impossible or seriously difficult to attain the objective of the proceedings in the case. For example, the breeder entitled may demonstrate, by submitting appropriate evidence, that the liable agricultural landowner sowed a specific area of land with unlicensed propagating material of the protected variety. When demonstrating a legal interest in a security the breeder may refer to any activities engaged in by the person liable which are aimed at transferring ownership of an agricultural holding to a third person.

In selecting the means of providing a security, the court takes account of the interests of the parties concerned in such as way as to afford the person entitled proper legal protection and to not unduly burden the person liable. When providing security before proceedings in a case commence, the court lays down the period within which the document instituting proceedings must be submitted in order to prevent a security from being refused. This period may not exceed two weeks. Thus, the breeder entitled is compelled to bring before the court having jurisdiction within 14 days an action, for example, for payment of remuneration for the use of propagating material of a variety protected by an exclusive right. The breeder’s application for the provision of a security must be considered without delay, but no later than one week from the date on which it was received by the court. The court notifies only to the person entitled the order relating to the security issued in close session to be implemented by an enforcement body. Notification to the person liable is made by the enforcement body at the same time as implementation of the order is initiated. If the person liable pays into the court’s deposit account an amount equivalent to the security requested by the person entitled in the application for provision of a security, the security is refused. The security is also refused if the breeder fails to bring an appropriate civil action against the person liable within two weeks or his action is dismissed or rejected with the force of res judicata. The Code of Civil Procedure provides for a wide range of securities. Security for pecuniary claims is provided, inter alia, by:

  • seizing moveable property, wages, receivables from a bank account or other receivables or other property right;
  • encumbering immovable property of the person liable with a compulsory mortgage;
  • imposing a prohibition on the alienation or encumbrance of immovable property for which there is no title register or whose title register has been lost or destroyed; or
  • imposing compulsory administration on the agricultural holding of the person liable or on part thereof.

Where a breeder’s application is not pecuniary in nature, for example an application to compel the person concerned to refrain from infringing an exclusive right resulting from the use of a variety’s denomination to designate propagating material of another variety, the court provides securities in a way that it deems appropriate in those circumstances.

(2)The possibility of securing evidence not only during civil proceedings but also before they commence is another procedural measure. Before proceedings commence, the court may, at the breeder’s request, secure evidence where there is concern that the conduct of proceedings will be unfeasible or excessively difficult or where there is a need to establish the present state of affairs for other reasons. In the case of an exclusive right the securing of evidence may consist in taking samples of the seeds or plants concerned before they are commercialised or processed. An application for the securing of evidence is submitted to the court having jurisdiction to hear the case, and in urgent cases or where proceedings have yet to be commenced, to the regional court in whose district the evidence is to be furnished. The breeder’s application must contain:

  • the name of the applicant and the defendant and any other interested persons, where they are known;
  • a statement of facts and evidence; and
  • the reasons underlying the need to secure evidence.

In that respect the securing of evidence may be permitted without summoning the defendant only in urgent cases or where the defendant cannot be identified or his whereabouts are unknown.

B. Extra-procedural instruments

A basic instrument of civil law is a breeder’s claim for payment of compensation for infringement of an exclusive variety right in so far as that infringement is connected with damage to the property of the breeder entitled. Under Article 415 of the Civil Code, any person who, through his own fault, causes damage to another is required to compensate therefor. A legal person is required to compensate for any damage caused through the fault of its body.

A claim for compensation for damage caused by tort or delict consisting in the infringement of an exclusive variety right is time-barred upon the expiry of three years from the date on which the injured person became aware of the damage and the person liable to compensate for it. However, in any event the claim is time-barred upon the expiry of ten years from the date on which the event causing the damage occurred.

In the context of a claim for payment of compensation the burden of proof is on the breeder entitled as regards showing that a specific entity has infringed his right and that infringement also constitutes a tort or delict within the meaning of Article 37 of the Law on the legal protection of plant varieties. The burden of proof is also on the breeder entitled as regards establishing the degree of the damage which occurred and the causal link between the tort or delict and the occurrence of the damage.

At present there is in Poland no specialist court hearing civil claims arising from infringements of exclusive plant variety rights. Therefore, in determining the jurisdiction of the relevant court it is necessary to refer to the general provisions of the Code of Civil Procedure.

In seeking to establish the court with functional jurisdiction (ratione materiae) it is necessary to rely on Article 16 et seq. of the Code of Civil Procedure. Under Article 16 thereof, the regional courts are to hear all cases other than those in respect of which jurisdiction is reserved to the district courts. However, under Article 17 of the Code of Civil Procedure, cases concerning the protection of copyright and neighbouring rights and those concerning inventions, utility models, industrial designs, geographical indications and integrated-circuit topographies, and the protection of other intangible property rights, inter alia, fall within jurisdiction of the district courts. There is no doubt that an exclusive plant variety right must be classified as an ‘other intangible property right’. Therefore, at first instance the district court will be the court with jurisdiction ratione materiae to hear cases relating to infringements of exclusive variety rights.

In establishing geographic jurisdiction (ratione loci) it is necessary to refer to Article 27 et seq. of the Code of Civil Procedure. In the case of a claim for compensation arising from a tort or delict the breeder entitled has the choice of court having jurisdiction ratione loci pursuant to the relevant provisions on the provisions on alternate jurisdiction. Initially the court having jurisdiction ratione loci will be the court in whose district the defendant is resident. An action against a legal person or other entity which is not a physical person is brought in accordance with the place where they are established. However, an action concerning a claim arising from a tort or delict may be brought before the court in whose district the event causing the damage occurred.

Irrespective of the foregoing, it is necessary to determine the division having jurisdiction to hear the case of the district court which has been determined ratione loci. Of all the divisions which may be set up in district courts, civil cases concerning infringements of exclusive variety rights may be brought before civil or economic divisions. Cases concerning infringements of exclusive variety rights will be decided in economic divisions where both the breeder and the party infringing the exclusive right are traders within the meaning of Polish law.[1] In other cases, cases will come under the jurisdiction of civil divisions. However, it should be noted that under Article 479(2)of the Code of Civil Procedure, the rules of procedure in economic cases do not apply where at least one of the parties is an individual farmer and the case would cover the field of the productive activity carried on by him in relation to crop production, livestock production, horticulture and fruit farming. The definition of ‘individual farmer’ is set out in Article 6 of the Law of 11 April 2003 on the organisation of agriculture.[2]

In the event of an infringement of the breeder’s exclusive right as a result of an agricultural landowner evading payment of the amount due for use as propagating material on his holding, without the breeder’s authorisation, of harvested material of the protected variety, the breeder has a claim for compensation under Article 471 et seq. of the Civil Code. These provisions govern compensation for damage arising from failure to fulfil or improper fulfilment of obligations. It must be accepted that where an agricultural landowner exercises his rights stemming from the institution of agricultural exemption, then a separate contractual bond is established between that land down and the breeder entitled. On the agricultural landowner’s part, there arises an entitlement to use harvested material of the protected variety for sowing and an obligation to pay the fee laid down in the Law on the legal protection of plant varieties. On the breeder’s part, there arises an entitlement to demand payment of the above-mentioned sum and an obligation to tolerate use by the agricultural landowner of harvested material for sowing purposes. If the agricultural landowner fails to fulfil his obligation – does not pay the fee – the breeder entitled will have a claim to compensation under Article 471 et seq. of the Civil Code. It should be noted that in that case failure to fulfil an obligation on the part of the agricultural landowner also constitutes a tort or delict under civil law and the breeder entitled has the choice of system of protection (either the contractual and non-contractual system).