Don't Wait Too Long To Enforce Your IP Rights, Especially Community Plant Variety Rights

• Published date: 12 January 2022
• Subject Matter: Intellectual Property, Copyright, Patent
• Law Firm: Schoenherr Attorneys at Law
• Author: Mr M'rk Kov'cs

Mark Twain famously said "Never put off till tomorrow what may be done day after tomorrow just as well." Although procrastination usually does not have serious consequences, careful consideration is needed when enforcing IP rights. In its recent decision in case C-186/18, the Court of Justice of the European Union ("CJEU") concluded that an unjustified delay in enforcing IP rights may result in the loss of a large part of the claim due to time-limitation.

Main facts of the dispute

After a proceeding lasting more than 10 years, a Community plant variety right was granted in respect of a special variety of mandarin tree. Following the successful application, a company entrusted with the management of the new plant variety right sent a cease-and-desist letter to a Spanish farming company that cultivated the protected variety of mandarin tree without a licence. Almost four years later, another cease-and-desist letter was sent, and as this too failed the rightsholder initiated court proceedings against the farming company in Spain.

The rightsholder claimed that the infringement was continuous, since the trees in dispute were still cultivated at the time the lawsuit was initiated. Pursuant to Spanish law, in the case of an ongoing infringement, the prescription period is extended for as long as the infringement continues.

However, the respective EU regulation on Community plant variety rights sets out that the prescription period starts to run after the Community plant variety right has finally been granted, from the time the holder learns about the act and the identity of the infringer, and it does not set out exceptions for continuous infringements.

The question arose: can EU law be interpreted in line with national law in a way that allows longer prescription periods in case of continuous infringements?

Conclusion of the CJEU

In short, the CJEU's answer is no. The time for the three-year prescription period to start to run in case of an infringement of Community plant variety rights is first determined by an objective event, namely when the Community...