April 2026 Court decisions relating to plant breeders’ rights are rare. This case gives an insight into how the legislation governing this aspect of intellectual property (i.e. the Plant Varieties Act 1997) will be applied.
Nadorcott is a well-known and successful variety of mandarin that was originally bred in Morocco. It is the subject of a Plant Breeders’ Right in several countries, including the UK, owned by Nador Cott Protection SAS (NCP). Tang Gold (also known as Tango) is another variety of mandarin that was developed by the University of California Riverside. It was developed by taking the budwood from the Nadorcott variety and irradiating it to produce mutations.
The main differences between Nadorcott and Tang Gold are that Nadorcott produces viable pollen and can produce seeds through cross-pollination, which is common unless the plants are covered. In contrast, Tang Gold does not produce viable pollen and thus is essentially seedless.
Mandarins of this Tang Gold variety were imported into the UK by International Procurement and Logistics Limited and sold in Asda Stores Limited.
NCP alleged that Tang Gold is a derived from and thus a dependent variety of Nadorcott and consequently the importation and sale of fruit of this variety is an infringement of their Plant Breeders Rights.
Plant Breeders’ Rights are defined in the Plant Varieties Act 1997, Section 1 of which states:-.
- Rights, to be known as plant breeders’ rights, may be granted in accordance with this Part of this Act.
- Plant breeders’ rights may subsist in varieties of all plant genera and species.
- For the purposes of this Act, “variety” means 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.’
One of the key issues in this case was whether the Tang Gold variety is a “dependent” variety of Nadorcott. Dependent varieties are defined in Section 7 of the Plant Varieties Act 1997, which states:-
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.’
The 1997 Act was enacted by the UK to implement the 1991 Act of the UPOV Convention. UPOV (Internation Unition for the Protection of New Varieties of Plants) publishes ‘Explanatory Notes’ providing guidance and information on how the provisions of the UPOV Convention can be understood and applied, which are revised as necessary. This guidance is not binding, as acknowledged by both parties. However, it may be considered as expert guidance approved by the organisation which administers the international convention from which the UK law is derived.
As part of their submissions, Asda suggested that 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. Consequently, every so-called ‘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. Mellor J accepted this point and its relevance when considering when one variety is a “dependent variety” from another.
In relation to the interpretation of Section 7 (3) of the Act, the Mellor J opined that:-
“There is no doubt that the purpose of Art.14(5) of the UPOV Convention and s.7(3) of the Act was and remains to strike the balance between encouraging the development of new plant varieties whilst protecting breeders from so-called ‘plagiarism’. However, I did not find any of the UPOV Notes or the individual expressions of opinion assisted to determine precisely where this balance lay.”
The Court considered the factors set out in section 7(3), specifically (i) predominant derivation; (ii) retention of the expression of the essential characteristics resulting from the genotype or combination of genotypes of the initial variety; (iii) clear distinguishability; and (iv) conformity to the initial variety in expression of essential characteristics except for differences resulting from the act of derivation, noting that in relation to essential characteristics, the UPOV Explanatory Notes indicates that these are “characteristics fundamental to the variety, contributing to performance or value for use, relevant along the supply chain”
Having made the analysis, Mellor J stated:-
“I conclude that seediness is an essential characteristic of Nadorcott and it is a characteristic which is not retained in Tang Gold. For slightly different reasons (due to the differing effects of Nadorcott pollen), I also conclude that pollen viability is also an essential characteristic of Nadorcott, also not retained in Tang Gold”
Thus, the Judge considered that while Tang Gold was predominantly derived from Nadorcott, as the distinguishing features of reduced pollen viability and reduced seed set resulted from the irradiative derivation. However, Mellor J also considered that the features of viable pollen and seediness are essential characteristics of the Nadorcott variety. As these are not retained in Tang Gold, as required by Section 7(3), Tang Gold is not essentially derived from Nadorcott and thus not a dependent variety.
Consequently, there was no infringement.
Another issue was considered in this case, despite the conclusion in relation to infringement, which related to whether NCP had lost any right of action against Asda because NCP had ‘a reasonable opportunity before the harvested material is obtained to exercise his rights in relation to the unauthorised use of the propagating material’.
Section 6(3) of the 1997 Act states:-
The rights conferred on the holder of plant breeders’ rights by subsections (1) and (2) above shall also apply as respects harvested material obtained through the unauthorised 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.
After full analysis of the facts, Mellor J concluded that the “unauthorised use” was limited to acts in territories whether the rights-holder has an enforceable plant variety right and has not authorised the use. The term “exercise his rights” was interpreted as enforcement to the extent available, for example that the right-holder had taken steps to prevent the obtaining of harvested material. Finally, “a reasonable opportunity” was considered to be dependent on the facts and flexible but does not necessarily exclude parallel proceedings, which were occurring in certain countries where NCP held rights.
On application of these principles, Mellor J concluded that the mandarins grown in territories where NCP had no rights would not fall under this exclusion. Even in countries where NCP does have rights, for example Spain and South Africa, the lengthy and on-going proceedings in those countries confirmed that the NCP was not able to identify the specific growers of the relevant fruits, thus demonstrating no reasonable opportunity.
As a result, Section 6(3) would not have prevented NCP from exercising their rights against the importation of Tang Gold into the UK. Of course, as Tang Gold was not considered a dependent variety, this conclusion is obiter.
This case provides valuable insight into the interpretation of The Plant Varieties Act. However, it is understood that NCP are planning on appealing, so the matter may not be over.
