Brief Summary

Plant Breeders' Rights — Breach of rights — Plaintiff seeking damages for alleged infringement of Plant Breeders' Rights in respect of Canna Phasion — First defendant contending that plaintiff was not the breeder and thus not entitled to rights — Court finding that plaintiff, having discovered and developed the Canna, qualifies as the breeder under the Act — First defendant's defences regarding the validity of the PBR and the plaintiff's status as breeder rejected — Plaintiff entitled to relief as the registered holder of the Plant Breeders' Rights.

Comprehensive Summary

Summary of Judgment

1. Introduction

The proceedings were a civil action for damages and ancillary relief arising from the alleged infringement of registered Plant Breeders’ Rights (PBR) in respect of a Canna variety marketed as Canna Phasion (also known in certain countries as Canna Tropicanna). The plaintiff sought compensation for infringement and related remedies, while the first defendant counterclaimed for the termination of the plaintiff’s PBR.

The parties were Keith Kirsten’s (Pty) Limited as plaintiff, Weltevrede Nursery (Pty) Limited as first defendant (a wholesale nursery), and the Registrar of Plant Breeders’ Rights as second defendant. The Registrar was joined because the first defendant, in reconvention, sought termination of the PBR—relief that implicated the statutory functions of the Registrar. The Registrar did not oppose and abided the court’s decision.

Procedurally, the matter proceeded to trial on the plaintiff’s infringement claim and the first defendant’s pleaded defences and counterclaim challenging the validity of the PBR. During the trial additional issues were raised (not all pleaded), including alleged statutory non-compliance relating to publication in the Government Gazette. An Anton Piller application (confirmed unopposed) had been brought earlier under a separate case number; the costs of that application were reserved for decision in this trial.

The general subject-matter concerned (i) whether the plaintiff held a valid, enforceable PBR for Canna Phasion, (ii) whether the first defendant’s conduct amounted to infringement under the Plant Breeders’ Rights Act, and (iii) what relief—particularly damages—should follow from proved infringement.

2. Material Facts

It was common cause that on 27 February 1996 the Registrar issued a Certificate of Plant Breeders’ Right in respect of the relevant Canna variety, expiring on 27 February 2011, and that the certificate was issued in the plaintiff’s name. It was also common cause that during 1999 the first defendant shipped Canna rhizomes to Belgium, and that these rhizomes had been split from plants purchased as Phasion or under other names (including Tropicanna and geel bontblaar Canna). Whatever names were used in commerce, the plants involved were found to be indistinguishable from the Cannas registered as Canna Phasion.

A significant further point was conceded during trial: if the plaintiff’s PBR had been validly issued, then the first defendant’s conduct constituted infringement as contemplated in section 23 of the Plant Breeders’ Rights Act 15 of 1976 (as amended). The trial accordingly focused on the first defendant’s two principal pleaded validity defences and related challenges.

The plaintiff’s account of how it acquired and developed the variety was accepted on the probabilities. On or about 21 February 1991, Mr Keith Kirsten visited the garden of Mr Theunie Kruger (a respected nurseryman) and observed an unusual pink-veined burgundy-striped Canna. Mr Kruger gave him authority to take rhizomes/cuttings and to develop the plant commercially. Mr Kirsten took the plant material to Johannesburg, established test plants, and undertook “bulking up” and propagation, including through Morgenzon Estate (which had facilities such as a tissue laboratory). The plaintiff applied for PBR protection in 1994, and the plant became available for commercial exploitation in 1995–1996, marketed as Canna Phasion.

The first defendant disputed aspects of this history. It advanced evidence suggesting that Mr Kruger had sold Cannas to Mr Kirsten (rather than gifting rights for development) and sought to show that the variety was not new or distinct, including by claiming that similar plants had been available in earlier decades. The court identified credibility problems in key defence witnesses on the alleged sale narrative and ultimately accepted that Mr Kirsten’s version of acquisition and development was more probable.

During the hearing, an additional factual and administrative issue arose concerning the Registrar’s compliance with publication requirements in the Act. Evidence suggested that publication may not have occurred due to funding constraints. After the matter was adjourned for judgment, the Registrar provided information indicating that publication of the application had in fact taken place in the Government Gazette No. 16151 on 9 December 1994, and the parties made further written submissions on that issue. The court treated this Gazette notice as establishing substantial compliance with section 13(1) in relation to publication of the application.

3. Legal Issues

The central legal questions were whether the plaintiff held a valid and enforceable PBR for Canna Phasion and, if so, what remedies followed from the first defendant’s infringement. While infringement was effectively common cause on the condition of validity, validity was contested on multiple bases.

The principal issues were a mixture of law, fact, and the application of law to fact, with a strong evaluative component in the assessment of witness credibility and probabilities on “newness” and “distinctness.” The key issues included whether the plaintiff was the “breeder” as defined in the Act (in particular, whether the plaintiff had “discovered and developed” the variety), whether the variety was “new” and “distinct” as required by the Act and regulations, and whether alleged non-compliance by the Registrar with publication obligations rendered the grant invalid or unenforceable against third parties.

A further remedial issue arose as to quantum: whether the plaintiff had proved its claimed damages calculated on a per-plant royalty basis, or whether it was confined to the statutory damages alternative under section 47(1) (damages up to R10 000 without proof of actual damages). The court also had to decide whether to grant the equitable/common-law type remedy of debatement of account in addition to statutory relief, and how to allocate costs, including the reserved costs of the Anton Piller application.

4. Court’s Reasoning

On the first pleaded validity defence (that the plaintiff was not the proper applicant and/or not entitled to apply), the court addressed the argument that the PBR was ultra vires because the application form was completed in a “confused manner,” naming individuals and indicating that the variety had been transferred by contract. The court accepted evidence from the Registrar’s official (Mr Joubert) that, notwithstanding errors in the form, the Registrar understood the application to be made on behalf of Mr Kirsten/the plaintiff, with Morgenzon and its employees acting as representatives or “proxies.” The court accepted that a breeder could apply through an authorised agent, and held that the incorrect completion of the form was immaterial where the Registrar knew who the applicant was and granted the right to the plaintiff.

On whether the plaintiff qualified as a “breeder,” the court applied the statutory definition, which includes a person who “bred, or discovered and developed” the variety, as well as an employer or successor in title. The plaintiff did not claim to have bred the variety “from scratch,” but relied on having discovered and developed it. The court assessed the evidence of how the plant material was obtained and developed for commercial exploitation, and it preferred Mr Kirsten’s version. It found that Mr Kruger had given Mr Kirsten the plant material and permission to take it forward; Mr Kirsten then propagated and developed it, engaged in bulking up and evaluation, and pursued statutory protection and marketing. On this footing, the plaintiff fell within the statutory concept of breeder by discovery and development.

On the second main pleaded defence (lack of newness and distinctness), the court considered the competing evidence and emphasised credibility and probability. The first defendant led evidence seeking to show that the plant had been sold previously, was common knowledge, and was not distinguishable from other varieties. The plaintiff, including an expert horticulturist, led evidence that the plant was a mutation and was distinct; it had not been widely available in commerce, and knowledgeable horticultural actors would have encountered it if it had existed as asserted.

The court found the first defendant’s evidence on newness and distinctness internally problematic and, in important respects, unreliable. It considered the evidence of defence witnesses (including Ms Clara Kruger, Mr Louis Kruger, Mr Rasmussen, Ms Cywes, and Mr Rogers) and identified limitations such as poor credibility, inability to confirm identity, uncertainty as to dates and distribution, and inability to substantiate claims of widespread commercial availability. By contrast, the plaintiff’s witnesses supported the conclusion that the variety was new, distinct, and clearly distinguishable, and that there was insufficient acceptable evidence of prior commercial exploitation or common knowledge at the relevant time. The court held that the first defendant had failed to discharge the evidentiary burden it bore in respect of this defence.

On publication and statutory compliance, the court dealt separately with section 13(1) (publication of particulars of the application) and section 20(2)(c) (publication of particulars of the grant). After receipt of the relevant Government Gazette, the court accepted that there was substantial compliance with section 13(1). Although the Gazette notice reflected Morgenzon as the applicant and Mr Keith Kirsten as the breeder, the court regarded the earlier reasoning on the application irregularities as applicable and considered the emphasis of section 13(1) to lie in the plant and denomination particulars rather than the precise identity description.

Regarding section 20(2)(c), the court addressed the argument that non-publication of the grant rendered the PBR unenforceable against third parties until publication occurred. The court reasoned that section 20(2) contemplates publication after the grant—meaning the right exists before the publication—and that neither the Act nor the regulations stipulated a time period for such publication. It accepted arguments that the point had not been pleaded as a defence, that the omission was capable of being remedied without prejudice, and that the first defendant was in any event aware of the existence of the PBR well before the infringement and had elected not to use statutory mechanisms to challenge it but rather to breach it. For these reasons, the court declined to dismiss the plaintiff’s claim based on the Registrar’s failure to comply with section 20(2)(c).

Having found the PBR valid, the court held that the first defendant’s reconventional claim for termination necessarily failed. It then turned to relief. While infringement was not seriously disputed once validity was established, the court required the plaintiff to prove quantum for its primary damages claim (calculated as a royalty of R2,96 per plant for 10 300 rhizomes). The court accepted that the plaintiff bore the onus on quantum and found the evidence unclear on the proper damages figure per plant (including whether saved expenditure should be deducted). It concluded that the plaintiff had not proved its claimed quantum.

Given that failure, the court applied section 47(1) of the Act, which permits damages (not exceeding R10 000) upon proof of infringement without proof of damages, and it awarded the statutory amount. The court declined to extend relief by ordering debatement of account, noting arguments that statutory relief sufficiently modified the common law in this context and that the shipment central to the litigation had been accounted for on the evidence.

On costs, the court exercised a discretion specifically regarding the reserved costs of the Anton Piller application. It considered authority cautioning that such procedures may be unnecessary if information can be obtained by other means, and it also noted the existence of a statutory search-and-seizure mechanism in section 24A of the Act that could have been used via the Registrar. The court nonetheless recognised that the Anton Piller implementation achieved some success for the plaintiff. Balancing these considerations, it ordered that no party should bear the costs of the Anton Piller application, while awarding the plaintiff its general costs of suit (including qualifying expenses of experts).

5. Outcome and Relief

The court upheld the validity of the plaintiff’s PBR and found that the first defendant had infringed that right, with infringement effectively conceded on the premise of validity. The plaintiff succeeded on liability but failed to prove the quantum of its main royalty-based damages claim.

The court granted statutory damages under section 47(1), ordering the first defendant to pay R10 000 to the plaintiff, together with interest at 15,5% per annum a tempore morae. The first defendant’s claim in reconvention seeking termination of the PBR was dismissed.

As to costs, the first defendant was ordered to pay the plaintiff’s costs of suit, including the qualifying expenses of expert witnesses. No costs order was made in respect of the Anton Piller application brought under case number 12100/1999.

Cases Cited

Amalgamated Packaging Industries Ltd v Hutt & Another 1975 (3) SA 943 (A).

Sunworld International Inc v Unifruco Ltd 1998 (3) SA 151 (C).

Legislation Cited

Plant Breeders’ Rights Act 15 of 1976 (as amended), including sections 2, 11, 13(1), 17, 20(1), 20(2)(a), 20(2)(c), 23, 24A, and 47(1).

Regulation No. R2630 promulgated on 24 December 1980 in Government Gazette No. 7349 (as amended by Regulation 37 dated 6 January 1984 promulgated in Government Gazette No. 9024), including Regulation 3.

Rules of Court Cited

No specific rules of court were cited in the judgment.

Held

The court held that the plaintiff’s Plant Breeders’ Right in respect of Canna Phasion was validly granted and enforceable. Defects or confusion in the completion of the application documentation did not render the grant ultra vires where the Registrar understood the application to be on behalf of the plaintiff and issued the certificate to the plaintiff.

The court held further that the plaintiff fell within the statutory definition of “breeder” on the basis that it discovered and developed the variety, and that the first defendant failed to prove that the variety was not new or not distinct at the time of application as contemplated by the Act and regulations.

The court rejected the contention that the plaintiff’s claim should fail due to alleged non-compliance with publication obligations, finding substantial compliance with section 13(1) and declining to treat non-compliance with section 20(2)(c) as rendering the right unenforceable in the circumstances described, particularly given that the point was not pleaded and was capable of remedy without prejudice.

On remedy, the court held that while infringement was proved (and largely not disputed on the premise of validity), the plaintiff failed to prove the quantum of its claimed royalty-based damages. The court therefore awarded statutory damages of R10 000 under section 47(1) without proof of actual damages, dismissed the reconventional claim for termination, awarded the plaintiff its costs of suit (including expert qualifying fees), and made no costs order for the Anton Piller application.

LEGAL PRINCIPLES

A party may qualify as a statutory “breeder” for purposes of plant breeders’ rights where it can be shown, on the facts, that it discovered and developed the variety, even if it did not create the variety by conventional breeding from inception.

Irregularities in the completion of an application form for plant breeders’ rights do not necessarily invalidate the grant where the Registrar understood the true identity of the applicant, treated representatives as authorised agents, and issued the certificate consistently with that understanding.

Where a defendant challenges the validity of a plant breeders’ right on the basis that the variety was not new or distinct, the court will evaluate the evidence on probabilities and credibility, and the challenger bears an evidentiary burden in respect of that defence as approached in the judgment.

Publication requirements in the statutory scheme were treated distinctly. Substantial compliance with section 13(1) publication was sufficient on the facts addressed. Non-compliance with section 20(2)(c) publication of the grant was not treated as automatically defeating enforceability in the circumstances considered, particularly where the omission was capable of remedy, the defence was not pleaded, and there was no demonstrated prejudice.

Under section 47(1) of the Plant Breeders’ Rights Act, once infringement is proved, a plaintiff may recover damages not exceeding R10 000 without proof of actual damages. However, if a plaintiff claims damages above that statutory amount, it bears the onus of proving the quantum, and unclear evidence on per-unit loss may result in failure to prove the higher amount.

In costs, the court may treat the costs of an Anton Piller application separately from the general costs of suit, including by considering whether alternative statutory mechanisms (such as section 24A) were available and whether the Anton Piller procedure was necessary, while also taking account of any practical success achieved through its execution.

Keith Kirsten's (PTY) Limited v Weltevrede Nursery (PTY) Limited and Another (554/2000) [2002] ZAWCHC 18; [2002] 3 All SA 624 (C) (22 April 2002)