Plant Varieties - Nador Cott Protection v ASDA

 

Jane Lambert

Patents Court (Mr Justice Mellor) Nador Cott Protection SAS v Asda Stores Ltd and another [2026] EWHC 553 (Pat) (12 March 2026)

This was a claim by Nador Cott Protection SAS against ASDA Stores Ltd, and International Procurement and Logistics Ltd. for the alleged infringement of Plant Breeders' Right number 28016 by importing  Tang Gold oranges into the UK and retailing them to the British public.  The action came on for trial before Mr Justice Mellor on 25 and 26 Nov 2025.  By para [359] of his judgment in Nador Cott Protection SAS v Asda Stores Ltd and Another [2026] EWHC 553 (Pat), which he handed down on 12 March 2026, the learned judge dismissed the action.

Issues

His lordship set out the issues in the trial as follows:

• whether the Tang Gold fruit was a dependent variety of Nador Cott's ("the dependent variety issue"), and if it was
• whether Nador Cott Protection had lost its right of action because it had a reasonable opportunity before the harvested material was obtained to exercise its rights in relation to the unauthorized use of the propagating material within the meaning of s.6 (3) of the Plant Varieties Act 1997 and had failed to do so ("the reasonable opportunity issue").

The judge explained in para [3] of his judgment that a dependent variety of fruit is known as "harvested material".

 

Background

Litigation on whether Tang Gold was a dependent variety had been conducted overseas for many years and was continuing in Spain and South Africa.  By the date of the trial, many of the original protagonists were dead, but the parties had managed to agree a statement of facts for trial and a chronology of overseas litigation.

PBR 28016

The claimant's plant breeder's right was originally registered as a Community plant variety right under Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights OJ L 227, 01/09/1994 P. 1 - 30. Art 54 (1) (c) of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community provided for the holder of a Community plant variety right granted pursuant to Council Regulation (EC) No 2100/94 to become the holder of a plant variety right in the United Kingdom for the same plant variety. That provision was implemented by reg 3 (2) and (3) of The Plant Breeders' Rights (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 204).

Nature of Plant Breeders' Rights

Mr Justice Mellor described plant breeders' rights as follows at para [54] of his judgment:

 "A key point is that new plant varieties do not emerge out of nowhere but are derived from previous existing varieties. Plant breeding essentially involves discovering or introducing genetic variation in a plant and then selecting from the available variation the desirable traits using skill and judgment, often aided by an array of technologies. As such, every 'new' variety is derived from at least one earlier variety to a greater or lesser degree. This is an important distinction from other IP rights."

His lordship referred to s.1 (1) of the Plant Varieties Act 1997 for the provision that rights to be known as plant breeders’ rights may be granted in accordance with Part 1 of the Act. He noted that s.1 (2) stated that such rights may subsist in varieties of all plant genera and species.  He added that s.1 (3) defines "variety" as "a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of plant breeders' rights (which are laid down in section 4 below) are met, can be—
(a) defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,
(b) distinguished from any other plant grouping by the expression of at least one of those characteristics, and
(c) considered as a unit with regard to its suitability for being propagated unchanged.'

The learned judge said at para [58] that a plant variety must satisfy the conditions of s.4 (2) to qualify for a plant breeders' right, namely that the variety must be (a) distinct, (b) uniform, (c) stable and (d) new, as further defined in that section.   

Ownership

Referring to s.4 (3) and (4) he also said that the person entitled to the grant of a plant breeders' right for a qualifying variety is the person who breeds it, or discovers and develops it, or his successor in title, save that if a variety is bred or discovered and developed by a person in the course of their employment, then subject to any agreement to the contrary, the employer (or their successor in title) is the person entitled to the plant breeders' right for that variety.

Rights of Action

The judge said at para [61] that s.6 (1) entitles the holder of a plant breeder's right to prevent anyone from doing a series of acts as respects the propagating material of the protected variety without his or her authority:

"(1) Plant breeders' rights shall have effect to entitle the holder to prevent anyone from doing any of the following acts as respects the propagating material of the protected variety without his authority, namely—
(a) production or reproduction (multiplication),
(b) conditioning for the purpose of propagation,
(c) offering for sale,
(d) selling or other marketing,
(e) exporting,
(f) importing,
(g) stocking for any of the purposes mentioned in paragraphs (a) to (f) above, and
(h) any other act prescribed for the purposes of this provision."

He added that s.6 (2) entitles the holder of a plant breeders' right to give authority for the purposes of s.6 (1) above with or without conditions or limitations.   He observed that s.6 (3) provides that the rights conferred on the holder of plant breeders' rights by s.6 (1) and s.6 (2) shall also apply as respects harvested material obtained through the unauthorized use of propagating material of the protected variety, "unless he has had a reasonable opportunity before the harvested material is obtained to exercise his rights in relation to the unauthorised use of the propagating material."

UPOV Convention

Mr Justice Mellor noted that the United Kingdom is a party to an international agreement known as the UPOV Convention or the International Convention for the Protection of New Varieties of Plants.  Art 14 (5) requires contracting parties to extend protection to:

"(i) varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety, 

(ii) varieties which are not clearly distinguishable in accordance with Article 7 from the protected variety and 

(iii) varieties whose production requires the repeated use of the protected variety."

His lordship explained that s.7 of the Plant Varieties Act 1997 implements that obligation:

"7. Dependent varieties.
(1) The holder of plant breeders' rights shall have, in relation to any variety which is dependent on the protected variety, the same rights as he has under section 6 above in relation to the protected variety.

(2) For the purposes of this section, one variety is dependent on another if—
(a) its nature is such that repeated production of the variety is not possible without repeated use of the other variety, or
(b) it is essentially derived from the other variety and the other variety is not itself essentially derived from a third variety.

(3) For the purposes of subsection (2) above, a variety shall be deemed to be essentially derived from another variety ("the initial variety") if—
(a) it is predominantly derived from—
(i) the initial variety, or
(ii) a variety that is itself predominantly derived from the initial variety,
while retaining the expression of the essential characteristics resulting from the genotype or combination of genotypes of the initial variety,
(b) it is clearly distinguishable from the initial variety by one or more characteristics which are capable of a precise description, and
(c) except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety.

(4) For the purposes of subsection (3) above, derivation may, for example, be by—
(a) the selection of—
(i) a natural or induced mutant,
(ii) a somaclonal variant, or
(iii) a variant individual from plants of the initial variety,
(b) backcrossing,
(c) transformation by genetic engineering.

(5) Subsection (1) above shall not apply where the existence of the dependent variety was common knowledge immediately before the coming into force of this Act."

Essentially Derived Varieties

The judge said at para [70] of his judgment that the case before him was concerned with art 14 (5) (a) (i), (b) and (c) of the UPOV Convention.  He added at para [73] that the assessment of whether a dependent variety is an essentially derived variety (and the scope of s.6 (3) and the reasonable opportunity limitation) had only been the subject of judicial interpretation and application a handful of times throughout the world and never in the UK.  Moreover, none of the case law addressed the issues of this case.  The parties exchanged submissions on the topic between para [75] and para [116].

Interpretation of s.7 (3)

The learned judge observed at [134] that the purpose of art.14 (5) of UPOV and s.7 (3) of the Act was and remained to strike a balance between encouraging the development of new plant varieties while protecting breeders from plagiarism.  He found no help in the UPOV Notes or opinions as to precisely where that balance lay.  Neither Regulation (EC) No 2100/94 nor Australian authority was binding on him. 

He concluded that he should apply the recognized principles of statutory interpretation set out by the Supreme Court in R (O) v. Secretary of State for the Home Department [2022] WLR(D) 65, [2022] INLR 189, [2022] UKSC 3, [2022] 4 All ER 95, [2023] AC 255, [2022] 2 WLR 343, [2022] HRLR 9, [2022] Imm AR 743 and Uber BV v. Aslam [2021] RTR 29, [2021] UKSC 5, [2021] WLR(D) 108, [2021] ICR 657, [2021] IRLR 407, [2021 to s.7 (3).  When he did that, the outcome was straightforward.  He held at [136] that s.7 (3) requires the following elements to be met before a variety is deemed to be essentially derived from an initial variety:

"i) predominant derivation from either the initial variety or a variety that is itself predominantly derived from the initial variety;
ii) while retaining the expression of the essential characteristics resulting from the genotype or combination of genotypes of the initial variety;
iii) it is clearly distinguishable from the initial variety by one or more characteristics which are capable of a precise description; and
iv) except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety."

Conclusion on the Dependent Variety Issue

The claimant argued that  Tang Gold was essentially derived from Nador Cott because:

• Tang Gold was predominantly derived from Nador Cott and met the requirements of s.7 (3) (a) and falls within the examples in s.7 (4);
• it is clearly distinguishable from Nador Cott by two characteristics and therefore meets the requirement of s.7 (3) (b); and
• it retains and conforms to Nador Cott in the expression of the essential characteristics of Nador Cott and so meets the requirement of s. 7 (3) (c) of the Act.

The defendants accepted the first two points but not the third because they submitted that seediness and pollen viability were essential characteristics of mandarin oranges and of Nador Cott.

After considering the evidence, Mr Justice Mellor held at [183] that seediness was an essential characteristic of Nador Cott and was not retained in Tang Gold.   He also found that pollen viability was an essential characteristic of Nador Cott, a characteristic not retained in Tang Gold.   It followed that the requirements of s.7 (3) (a) had not been met.  Consequently, Tang Gold was not essentially derived from Nador Cott and therefore not a dependent variety of Nador Cott

The Reasonable Opportunity Issue

His lordship's finding that Tang Gold was not a dependent variety of Nador Cott disposed of the case, but he addressed the reasonable opportunity issue because it had been fully argued, and in case the litigation goes to appeal. The dispute concerned the construction of the words "unless he has had a reasonable opportunity before the harvested material is obtained to exercise his rights in relation to the unauthorised use of the propagating material," in the context of s.6 (3). The judge noted that the subsection was intended to implement art 14 (2) of the UPOV Convention. 

Construction of s.6 (3)

The judge noted in para [36] of his judgment that the Supreme Court had held in For Women Scotland Ltd v The Scottish Ministers  [2026] AC 315, [2025] 2 WLR 879, [2025] ICR 899, [2025] WLR(D) 211, [2025] UKSC 16 that there is a presumption that a word used more than once in the same statute has the same meaning throughout based on the idea that the persons who drafted the statute were seeking to create a coherent text. 

Applying that presumption in the context of s.6 (3) and the Act more generally, the judge held that the words "his rights" could only refer to the rights conferred by the Act, consistently with all the other mentions of "rights" in the Act. It was impossible, in his view, suddenly to interpret "rights" in s.6 (3) as embracing all corresponding rights anywhere else in the world. Specific and particular wording would be required to lead to that conclusion.   In the light of his lordship's interpretation of the words "his rights" as referring only to UK rights, the only relevant unauthorised use of propagating material would be use in the UK.

Mr Justice Mellor turned to the phrase "a reasonable opportunity to exercise". He concluded at para [348] that "exercise" in this context meant enforcement and not merely assertion. It entailed that the obtaining of harvested material had been prevented. The words "a reasonable opportunity" meant exactly what they said. The judge said that it must be a matter of fact and degree, to be determined in all the circumstances, as to whether the right holder has had a reasonable opportunity to exercise his rights.

Lastly, his lordship considered the words "before the harvested material is obtained". He held that they must have referred to a period within which a reasonable opportunity for the rights holder to exercise his or her rights must have existed.

Applying those Principles
The judge held that the claimant did not fall within the exception provided by s.6 (3) because any unauthorized use of propagating material would have taken place outside the United Kingdom, where the claimant had no rights.   No unauthorized act took place in this country.  It followed that the claimant had no reasonable opportunity before the harvested material was obtained to exercise its rights in relation to the unauthorized use of the propagating material. Had his lordship reached the opposite conclusion on the first issue 1, the claimant would not have been prevented from exercising its rights under s.6 (3) and would have been able to obtain an injunction against further import of Tang Gold into the UK and damages or an account of profits in respect of the importation and sale of Tang Gold fruit before the injunction.

Comment

Actions for the infringement of blant breeders' rights are rare in the United Kingdom, though there may be more of them with climate change and the need to breed new crops that can resist extreme temperatures and changes in rainfall.  Anyone wishing to discuss this article may call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.