Appeal Board Decision ' Plant Breeders' Rights Act

• Published date: 11 August 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Adams & Adams
• Author: Mr Louis Van Der Walt

THE APPEAL BOARD APPOINTED

IN TERMS OF S 42(2) OF THE PLANT BREEDERS' RIGHTS ACT, 15 OF 1976

DECISION

In the matter between:

AGRICULTURAL RESEARCH COUNCIL ("ARC") Appellant

and

REGISTRAR OF PLANT BREEDERS' RIGHTS ("the Registrar') First Respondent

SUNKIST GROWERS INC ("SGI") Second Respondent

ORDER

On appeal from a decision of the Registrar of Plant Breeders' Rights:

The appeal is upheld and the decision of the Registrar of Plant Breeders' Rights, conveyed on 17 February 2020, instructing the appellant to alter the SUN KISS denomination within 60 days, is set aside.

DECISION

[1] This matter relates to an appeal from a decision of the Registrar of Plant Breeders' Rights (the Registrar) in respect of South African Plant Breeder's Right No. ZA981943 for the Japanese plum variety bearing the denomination SUN KISS.

[2] The Agricultural Research Council (the appellant) lodged an application for the grant of a plant breeder's right for a Japanese plum variety bearing the denomination SUN KISS on 21 July 1997, in terms of the Plant Breeders' Rights Act 15 of 1976 (the PBR Act). After examination of the application, the Registrar (the first respondent)issued a certificate of grant on 25 June 1998 for a South African plant breeder's right under the registration number ZA981943 for the SUN KISS Japanese plum variety. Subject to payment of the annual renewal fees, ZA 981943 will remain in force until 25 June 2023.

[3] The grant of ZA 981943 was published in the Government Gazette 23066 of 1 February 2002. No objection to the grant of ZA 981943 was lodged in terms of S 17(1) of the PBR Act read together with Regulation 8(1)(a) within six months as prescribed.

[4] In addition, the Directorate: Genetic Resources in the Department of Agriculture published the South African Special Plant Variety Journal in relation to Plant Breeders' Rights valid in the Republic at 31 December 2002. This journal is published annually inter alia to satisfy the requirements of The International Convention for the Protection of New Varieties of Plants ("UPOV"). Amongst others, the journal notified the UPOV community of the grant of a South African PBR in the SUN KISS variety.

[5] In 2019, the second respondent became aware of the appellant's use of the varietal name "SUN KISS" in respect of fresh plums when it encountered fruits under this name in the Hong Kong market. On 5 June 2019 the attorney for the second respondent wrote to the appellant advising the appellant that the second respondent is the proprietor in South Africa of the trademarks 1971/01366 SUNKIST in class 31 and 2005/23300 SUNKIST in class 31, with the specifications of these trademarks including fresh fruits and natural plants. It is not in contention that the trademark 1971/01366 SUNKIST in Class 31 was granted to the second respondent in respect of "fresh fruits and vegetables" ("the 1971 trade mark") on 5 April 1971.

[6] The second respondent asserted that its trade marks were being infringed by the SUNKISS denomination and called on the appellant, inter alia, to apply to the Registrar for alteration of the varietal denomination SUN KISS under Ss 32(1)(b) and 32(2), and Regulation 15, of the PBR Act.

[7] Regulation 5, titled "Denominations for varieties", is relevant here and sets out the prescribed requirements. Regulation 5(d) provides as follows:

Denominations for varieties

5. (1) The denomination which is proposed for a variety in terms of regulation 3(2)(c) shall-

...

(d) subject to the provisions of sub-regulation (3) not be identical with or similar to, or liable to lead to confusion with a mark which enjoys the protection accorded thereto by the Trade Marks Act, 1963 (Act No. 62 of 1963), and which applies to propagating material or the use in connection therewith or in connection with a product thereof.

[8] S 32 of the PBR Act governs the circumstances under which the Registrar may require the alteration or supplementation of an approved denomination:

"32. Alteration of denomination '

(1) The denomination approved in respect of a variety may be altered or supplemented by the Registrar'

(a) if ordered by the court on the application of a person who in law has a preferent claim to the use of the designation in question;

(b) on the application of the holder of a plant breeder's right in that variety;

(c) if the information submitted to the Registrar in the application for the approval of, or in connection with, the denomination in question was incorrect and the Registrar is of the opinion that such denomination would not have been approved had he known that such information was incorrect; or

(d) if information comes to light which, if discovered earlier, would in the opinion of the Registrar have resulted in the refusal of such denomination.

(2) An application referred to in subsection (1) (b) shall be made to the Registrar in the prescribed manner and shall be accompanied by the prescribed application fee.

(3) If an alteration or supplementation becomes necessary on a ground referred to in paragraph (c) or (d) of subsection (1), the Registrar shall in writing inform the holder of the relevant plant breeder's right thereof and give the grounds on which the alteration or supplementation is deemed necessary, and such holder shall submit proposals for an alteration or supplementation within 60 days from the date of the notice to him.

.....

(7) The Registrar shall forthwith publish by notice in the Gazette the prescribed particulars relating to an alteration or supplementation ordered under subsection (1) (a)."

[9] On 28 June 2019 the attorney for the appellant informed the attorney for the second respondent that the appellant refuses to apply to the Registrar for alteration of the varietal denomination SUN KISS.

[10] On 26 July 2019 the attorney for the second respondent requested the Registrar to compel alteration of the varietal denomination SUN KISS to a denomination which is not similar to SUNKIST, on the basis of S 32(1)(d) of the PBR Act, which provides that denominations which have been approved in respect of a variety may be altered by the Registrar "if information comes to light which, if discovered earlier, would in the opinion of the registrar have resulted in the refusal of such denomination".

[11] Following several submissions by the attorney for the appellant and the attorney for the second respondent respectively, the Registrar informed the attorney for the appellant on 17 February 2020that alteration of the denomination SUN KISS is necessary and requested the appellant to submit proposals for an alteration within 60 days.

[12] An extract from the Registrar's decision reads as follows:

"6. In terms of the afore-mentioned regulation the Registrar, before approving a denomination, must ensure that any denomination which is proposed for a variety is not identical with or similar to, or liable to lead to confusion with a mark which enjoys the protection accorded there to by the Trade Marks Act, 1963 (ActNo.62of1963). It follows that...