By judgment of 15 July no. 8745/15, the Court of Milan – Business Chamber “A” – clarified certain issues relating to the proof of ownership of the plant variety rights provided by Articles 100 onwards of the Italian IP Code and by Regulation no. 2100/94/EC (and granted at a national level by the Italian Patent and Trademark Office, and at the Community level by the Community Plant Variety Office).

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The proceedings in which the decision was issued was commenced by BASF Italia against Società Agricola Magnani: the first complained that the second was infringing two of its patents on the “Clearfield” system for the protection of rice crops, as well as its exclusive rights on the plant variety named “Polluce CL”. It had therefore commenced urgent proceedings whereby it was granted an ex-parte search order authorising it to inspect the rice and seeds in the defendant’s field. Later, it commenced ordinary proceedings requesting, in addition to a finding of infringement of its patent and plant variety rights, an injunction against the infringer and an order to pay damages.

In the decision at issue, the Court found that the plaintiff had not provided certain evidence of its ownership of the plant variety right. In fact, it had only proved that the variety had been included in the “common Catalogue of varieties of agricultural plant species” set forth by Directive 53/2002/EC. However, the Court observed that this is aimed at identifying the varieties accepted for marketing within EU territory and is aimed at protecting public health, and is not sufficient evidence to prove the ownership of plant variety rights.

“In practice”, the Court said, “it is not possible, by mere registration in the Catalogue, to identify in a certain and unequivocal manner by whom or when an application for a plant variety right was submitted, nor can information be found therein about the possible grant date of the plant variety right”. As a result, “you cannot equate the insertion in the common Catalogue to the formal granting of the plant variety right in accordance with articles 100 onwards of the Italian IP Code and article 62 of Regulation no. 2100/94/EC. Therefore, there is no proof of the grant of national or Community plant variety rights”.

The judgment adds that, even if there had been evidence of ownership of the plant variety right, this would not have been violated: the allegedly infringing acts were in fact put in place before that right was granted. Instead, regarding the alleged infringement of the patents on the “Clearfield” system, the Court pointed out the need for an additional investigation: hence, having rejected the BASF claims based on the plant variety right, the Court provided for the continuation of the proceedings with the aim of assessing patent infringement.