Civil Court Lacks Jurisdiction to Determine Validity of Registered Plant Variety

In India, the protection of plant varieties is outside the purview of the patent system. This led to the enactment of a sui generis legislation the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (PPVFR Act, hereinafter “Act”) that confers an exclusive right on the plant breeder or his licensee to produce, sell, market, distribute, import or export the variety. This exclusivity is enforceable under the Act when the breeder’s right is infringed by a third party. Naturally, the alleged infringer will be given the opportunity to refute and defend. The nature and extent of such defence was examined recently by Calcutta High Court in an appeal before it.

In re Pan Seeds Pvt. Ltd. v Ramnagar Seeds Farm Pvt. Ltd. and Ors. (FMAT 11/2023), the High Court in its judgement dated June 09, 2023, ruled that when an infringement suit is filed under the Act and a plea is made by the defendant that the registration of plant variety is invalid, the court trying the suit is left with no option but to take the registration as valid and deal with the suit accordingly. In other words, the civil court is barred to investigate the defence of invalidity in an infringement suit concerning plant variety /seed. Let us now turn to the facts and analysis of the said case:

Factual matrix and the dispute

In 2010 the appellant filed an application for registration of the plant variety ‘PAN 804’ before the Registrar under the PPVFR Act. The claimed distinguishable feature of the variety was the white stigma. This variety was tested by the Registrar u/s 19 to check its “distinctiveness, uniformity and stability (DUS)”. DUS testing is a way of determining whether a newly bred variety differs from existing varieties in the same species and whether those differences in characteristics are well-known over two successive growing seasons. Thereafter, the appellant’s application was advertised in 2017 by the registry u/s 21 inviting opposition. No opposition was filed by anybody. After considering the application, in 2018 the Registrar issued a registration certificate u/s 24 for the plant variety ‘PAN 804’ to the appellant. Apart, the appellant had also obtained registration of its trademark ‘JAMUN’ and ‘PAN 804, JAMUN’.

From 2020 onwards, the appellant discovered that the respondents had been distributing and selling seeds identical to the appellant’s registered plant variety PAN 804 under the name ‘JAMUN’ and ‘DURONTO’, having a white stigma. This would be an infringement of the exclusive right of the appellant acquired by them u/s 28. Therefore, the appellant petitioner filed a suit in the court of District Judge, Purba Bardhaman claiming, among others, a decree of perpetual injunction restraining the respondents/ defendants from acts of infringement. An interim application for injunction was also moved before the court.

Impugned order of the Trial Court

The civil court dismissed the interim application of the appellant citing the following reasons:

Preliminary point

a) Though the registration was issued for variety, the infringement was claimed in respect of seeds. The distinctiveness of variety, as declared in the amended application by the appellant (referred to in the registration certificate), did not lie in the ‘seeds’ thereof.

Substantive points

b) The practice of the courts to compare marks etc. in intellectual property matters could be borrowed to adjudicate the matters under the PPVFR Act.
c) Prima facie, the court could go into the distinctiveness features of the product in respect of which exclusive rights were claimed under the PPVFR Act and the appellant had the obligation of establishing these features.
d) The certificate of registration itself did not mention or depict any distinguishing characteristics of the appellant’s variety.

High Court’s findings

Aggrieved by the trial court’s rejection of the interim injunction, the appellant approached the High Court (HC). The appellant’s central argument was that the civil court had no authority to decide the validity of the registration, finally or even prima facie and such power was vested in the Registrar or the PPVFR Authority as specified in the Act. That the court erroneously went into that question prima facie at the interim stage. After examining the submissions of parties and the District Judge’s order, the HC ruled on the followings :

(i) Seeds are equally protected under PPVFR Act

On point (a) above, the HC held that the civil court failed to appreciate that the registration of a plant variety protected its seeds also. Referring to the definitional section 2, the HC held that ‘variety’ included ‘propagating material’ which in turn included ‘seeds’. As section 28 confers on the breeder of a registered variety an exclusive right to ‘variety’, it is evident that the registration of a variety would protect plant variety as well as the seeds.

(ii) Effect of registration under the PPVFR Act is different from that of the Trade Marks Act

On point (b) above, the HC made a clear distinction between rights conferred by registration under the two statutes. It was held that the right conferred by variety registration is without validity condition, whereas the right conferred by trademark registration is conditional one. Under section 28 of the Trade Marks Act, 1999, the registration of a trademark gives the proprietor the exclusive right to use it, provided the registration is valid. Further, section 31 of the Trade Marks Act provides that the registration of a mark would only be prima facie evidence of its validity. Per contra, there is no such condition in section 28 of the PPVFR Act and the HC held that registration per se gives the breeder the exclusive right to produce and deal with the variety, not subject to fulfilling the validity test. Thus, the trademark practice cannot be borrowed, if the right under PPVFR Act is challenged by the alleged infringer.

(iii) Appropriate forum under PPVFR Act to test the validity of plant variety registration

Once the linkage of registration and right u/s 28 is determined and contrasted with the trademark system, the HC further decided on the appropriate platform to challenge the validity of plant variety registration. HC examined Chapter V of the Act, which includes provisions for revocation and cancellation of registration. HC held that only the PPVFR Authority u/s 34 or the Registrar u/s 36 has the power to revoke or cancel the registration on the ground that a variety’s registration is invalid. Besides, HC discussed the mandate of section 89 that imposes a specific bar on the civil courts to determine any matter over which the Authority or the Registrar has jurisdiction. On a harmonious interpretation of these sections (28,34,36,89), the HC ruled that once a plant variety is registered, it is not subject to the test of validity by the civil courts, not even prima facie.

(iv) Limitation on civil court’s jurisdiction

As to points (c) and (d) above, the HC was of the view that the civil court must proceed on the footing that the registration is valid and, on that basis, it should adjudicate the interim application. It was held that the court below had overstepped its jurisdiction by going into the prima facie case on the question of the validity of the appellant's registration. At the interim stage, District Judge had done a comparative analysis of the diverse varieties by relying on the voluminous documents (including DUS reports) submitted by the respondent and thereby unnecessarily made a prima facie conclusion of the non-distinctiveness of the appellant’s variety. The civil court could only go into the question of whether the appellant and the respondents’ varieties were similar, to consider whether an injunction should be granted.

In the instant case, the HC held that it was an admitted fact that the two varieties of appellant and respondent were similar (both having white stigma). It was also noted by HC that no order from any appropriate authority declaring the registration invalid was available on record. Therefore, HC set aside the impugned order of the court below and issued an injunction restraining the respondents from dealing with the plant variety PAN 804 including the seeds till the disposal of the suit.

Conclusion

Unlike other intellectual property matters (patents, marks etc.), the registration under the PPVFR Act is conclusive proof of exclusive right. In particular, section 28 confers on the breeder exclusive right without validity condition and this right cannot be adjudged and the validity of this registration cannot be tested in any civil court. It can only be adjudged by the Authority or the Registrar under the PPVFR Act. Till the time the registration is declared to be invalid by the appropriate forum under the Act, the breeder is entitled to prevent any other breeder from dealing with the variety. In sum, the legislative intent under the special Act is to provide stringent protection to registered plant varieties.

On the other hand, due to the limitation on invalidity defence, the defendant’s strategy needs to focus on a dissimilarity argument in a plant variety infringement case before a civil court. That said, as the HC suggested, if it is shown to the court that necessary steps have been taken by the defendant diligently before the Registrar or the Authority to obtain cancellation of the registration on the ground of invalidity, the court would have the discretion to adjourn the hearing of the suit to give a chance to the defendant to prove his point. However, any interim application for an injunction will be determined based on the status of the registration on the date the interim order is made.