Weltevrede Nursery (Pty) Ltd v Keith Kirstenï¾’s (Pty) Ltd and Another (515/2002) [2003] ZASCA 136; [2004] 1 All SA 181 (SCA) (28 November 2003)

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[2003] ZASCA 136
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Weltevrede Nursery (Pty) Ltd v Keith Kirstenﾒs (Pty) Ltd and Another (515/2002) [2003] ZASCA 136; [2004] 1 All SA 181 (SCA); 2004 (4) SA 110 (SCA); 2003 BIP 328 (SCA) (28 November 2003)

Reportable
Case No 515/2002
In the
matter between:
WELTEVREDE
NURSERY (PTY) LTD
Appellant
and
KEITH
KIRSTEN’S (PTY) LTD First Respondent
THE REGISTRAR OF PLANT
BREEDERS’ RIGHTS Second Respondent
Coram: HARMS, STREICHER, MTHIYANE, CONRADIE JJA and SOUTHWOOD AJA
Heard: 11 NOVEMBER 2003
Delivered: 28 NOVEMBER 2003
Subject: Plant Breeders’ Rights Act 15 of 1976 – description of
variety – holder and applicant – breeder – novelty.
J
U D G M E N T
HARMS JA/
HARMS JA:
[1] The plaintiff, Keith Kirsten’s (Pty) Ltd, holds a plant
breeder’s right certificate for a particular variety of canna,
named
for purposes of registration ‘Phasion’, a corruption of and
pronounced as ‘passion’. The registration certificate (PBE-ZA
961
360) was issued on 27 February 1996 and the right is due to expire on
26 February 2011.
1
What makes this canna, which is marketed under the trade name
‘Tropicanna’, special is the colour of its leaves. A trade
leaflet
describes them in these terms: each leaf is an exotic
combination of vivid colours; new foliage emerges in rich burgundy
tones, which
quickly develop flamboyant stripes of red, pink, yellow
and deep green fanning out from the vivid green central vein.
[2] The variety is a commercial success and there is an export market
for it. Intending to capitalise on its popularity the defendant,
Weltevrede Nursery (Pty) Ltd, obtained an export order for a
substantial number of Tropicana rhizomes (root stock). To fulfil the
order it had to purchase rhizomes from other nurseries. The plaintiff
became aware of this and obtained an order in terms of which
the
rhizomes in the defendant’s possession were attached pending
infringement proceedings. Some of the attached rhizomes were grown
and on comparison found to be the same as a Phasion plant obtained
from the plaintiff. During the course of the trial the defendant
admitted ‘infringement’ conditionally – the admission was
subject to the failure of its defence of invalidity of the
plaintiff’s
registration. The defendant also counterclaimed for the
termination of the plaintiff’s plant breeder’s right. In the
event the
defence and counterclaim did not succeed and the Court
below
2
gave judgment for the plaintiff in the sum of R10 000,00 which is the
amount a successful plaintiff is statutorily entitled to absent
proof
of loss.
3
THE STATUTORY SETTING
[3] The Patents Act 37 of 1952 provided for the registration of plant
patents by including in the definition of ‘invention’ any
distinct and new variety of plant, other than a tuber propagated
plant, which had been reproduced asexually (s 1). Patents for plants
were abolished and replaced by plant breeders’ rights in the Plant
Breeders’ Rights Act 22 of 1964 which
in turn was superseded by the current Plant Breeders’ Rights
Act 15 of 1976 as amended from time to time. Some of the amendments
were necessitated by international developments. There is namely an
International Convention for the Protection of New Varieties
of
Plants
4
.
The amendments to the 1976 Act effected by the
Plant Breeders’
Rights Amendment Act 15 of 1996
are of particular importance to this
case. The reason is this: the plaintiff’s application and the grant
by the Registrar both
predate the 1996 amendment. This means that the
validity of the plaintiff’s rights has to be assessed under the
provisions of the
Act prior to the amendment. Other matters such as
the content of the plant breeder’s right and the permissible court
orders have
to be determined under the amended Act. This both the
Court below and the plaintiff failed to appreciate and both acted on
the assumption
that all the issues had to be decided under the 1996
amendment.
[4] I consequently deal with the provisions of the Act as they
existed before the 1996 amendment. (Many of the provisions are still
the same or substantially so and the reader must not be misled by the
use of the past tense to believe that what follows applies
only to
the pre-1996 position.) Only a ‘breeder’ of a new variety of
plant was entitled to apply for a plant breeder’s right
(s 6(1))
and a ‘breeder’ was defined to mean the person who directed the
breeding of the new variety, or who ‘developed or
discovered’ it
(s 1 sv ‘breeder’). An application for a plant breeder’s right
had to be in respect of a ‘new’ variety
and a variety was deemed
to be new if it complied with the prescribed requirements (s 2(2)).
5
It had to be made in the prescribed manner and be accompanied by the
prescribed application fee and documents (s 7(1)). The regulations
prescribed a form which had to be accompanied,
inter alia
, by
a description in a technical questionnaire of a typical plant of the
variety concerned.
[5] At the time of the filing of the application the applicant could
also have applied for provisional protection which the Registrar
had
to grant if satisfied that the required information, facilities and
material had been furnished (s 14(2)(a)). While a protective
directive was in force, the variety was protected as if a plant
breeder’s right had already been granted (s 15).
[6] The application had to be advertised (s 13(1)) and after the
lapse of the opposition period the Registrar had to consider the
application and establish whether or not it complied with the
requirements of the Act (s 19(1)(a)). If the application,
inter
alia
, conformed ‘to the requirements of the Act’ the
Registrar was obliged to issue a plant breeder’s right (s 20(1)) by
issuing
a certificate of registration ‘to the person who applied
for the grant of the right’, the entering of certain particulars in
the register, and by notice in the Government Gazette (s 20(2)).
[7] On 25 July 1994, Morgenzon Estates, which is a trading name of
Sapekoe (Pty) Ltd, applied as applicant for a plant breeder’s
right
for a Canna Phasion. It stated that the ‘discoverer’ of the plant
was Keith Kirsten’s (which the plaintiff argues is
a reference to
it, the ‘(Pty) Ltd’ having been omitted by mistake); that no
other person participated in the discovery of the
variety; and that
the variety had been transferred to Morgenzon by means of a contract.
(The Act permitted a successor in title of
the breeder to apply as
‘applicant’ (s 6(1)(c)).)
DESCRIPTION OF THE NEW VARIETY
[8] A plant breeder’s right is granted consequent to a registration
process and like other intellectual property rights that depend
on
registration, the right has to appear
ex facie
the register
and the right granted must bear a relationship to the right applied
for. The point is well illustrated by
Cointreau et Cie v Pagan
International SA
[1991] ZASCA 89
;
1991 (4) SA 706
(A), a trade mark case. The
registration was for a container mark which was represented on the
register by means of a two-dimensional
drawing. In order to establish
infringement reliance was placed on a specimen of a bottle produced
by the owner of the trade mark.
Corbett CJ pointedly made the
following remarks:
‘
It is clearly of great importance, both to the
proprietor of the trade mark and to the general public, that the
trade mark be adequately
represented in the trade mark register.’
(At 710H.)
‘
Appellant's counsel was not able to cite any
authority for the proposition that the Court is entitled to look at
an embodiment of
the trade mark in order to supplement an inadequate
representation of the mark in the register. I myself know of none and
the proposition
appears to me to run counter to principle. It is
after all the mark as registered, ie as represented in the register,
which delineates
the proprietor's monopoly and proclaims to the
general public what the forbidden territory is. And it is the mark as
registered which
forms the basis of the comparison which must be made
when it is alleged that someone else is using a mark which infringes
the rights
of the registered proprietor (see
Plascon-Evans Paints
Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at 640-1;
Kerly's Law of Trade Marks and Trade Names
12th ed at 271-2).
If the proprietor were entitled in infringement proceedings to add to
or supplement the representation of the
mark as registered, these
principles would be wholly subverted and substantial inequity could
arise. I am accordingly of the view
that in this case the proper
basis of comparison is appellant's mark as represented in the
register and that it is not permissible
to have regard to the
container actually used by the appellant to market its goods. (At
711G-712B.)
These principles, in my judgment, apply to all registered
intellectual property rights. In the case of plant breeders’
rights,
the rule has a close relationship with the requirement that a
new variety has to be ‘distinct’, i.e. – in the words of the
amended s 2(b) – that ‘it is clearly distinguishable from any
other variety’
6
and – in the words of reg 3(4) – its characteristics ‘precisely
describable’. All this must appear from the register.
[9] At the beginning of this judgment reference was made to a trade
description of the Phasion canna, one of the reasons being that
the
application form filed with the Registrar contained none. In other
words, the prescribed mandatory requirement of a description
of the
new variety was not complied with. What was not omitted though was an
application by Morgenzon for a provisional protective
direction. This
the Registrar granted on 23 August 1994 and he advertised Morgenzon’s
application in the Government Gazette of
9 December 1994. How that
could have happened in the absence of a description of the new
variety is a mystery. What happened in effect
was that Morgenzon did
no more than apply for the registration of the name of a new canna
and that the Registrar, in substance, accepted
an application for and
granted interim plant breeders’ rights in relation to an
unidentified variety. A member of the public would
not have been able
to establish the scope of the interim protection and no one could
have opposed the application in the absence
of the description.
[10] There is another reason why I used the trade description of
Phasion. During the course of the registration process the Registrar
undertook tests and trials with this variety (s 19(2) and (3)),
plants or rhizomes presumably having been provided by either the
plaintiff or Morgenzon. The Registrar then entered a description of
the plant in the register on a form entitled ‘Variety Description’.
What it sets out are the plant height and the leaf shape, length,
width and colour. The colour is said to be, for young leaves ‘red
with dark red stripes’, for mature leaves ‘green with white
stripes’ and for flowers ‘orange’ (no 28A). This description
of
the colour of the leaves, plaintiff’s counsel conceded, is not a
description of the Phasion leaf. Interestingly but not surprisingly,
the registrations in the USA and in New Zealand of the same variety
provide flamboyant descriptions which are more in line with the
trade
description than with the locally registered description.
Nevertheless, both parties conducted the litigation without any
reference
to the registered description. On the incorrect premise
that what was in issue was the plaintiff’s commercial Tropicanna or
Phasion
canna and not the registered plant, the defendant admitted
infringement and disputed novelty. In this respect the evidence at
the
trial was mostly misdirected. If one asks the wrong question one
tends to receive the wrong answer.
THE APPLICANT AND THE HOLDER
[11] I have mentioned that the applicant for the plant breeders’
right was Morgenzon. However, contrary to the provisions of s
20(2)(a), which require that the certificate should be issued to the
person who had applied for it, the certificate was issued to
the
plaintiff. The Court below thought that this was in order because, it
held, Morgenzon intended the application to be that of
the plaintiff
and that is how the Registrar understood the position. Since no one
testified on behalf of Morgenzon, I do not know
how the Court could
have determined what Morgenzon’s intention was. How the Registrar
‘understood’ the application cannot be
a relevant consideration.
The evidence of a member of the staff of the Registrar, Mr Joubert,
in this regard was hardly admissible
– the public is entitled to
rely on the information contained in a public register and not on the
personal knowledge of one or
other official in that office – and is
in any event disproved by his own actions. In the Government Notice
in which the application
was advertised, Morgenzon was indicated as
the applicant. Somewhere else in the same notice is an application
for another variety
in the name of Mr Keith Kirsten, the then
managing director of the plaintiff. Furthermore, when the Registrar
granted the interim
protection it was to Morgenzon and not to the
plaintiff. Another problem with the evidence of Joubert, who is a
scientist and not
a lawyer, is that he was unable to distinguish
between someone who acts as agent for a breeder and someone who
applies in his own
name as successor in title of the breeder. He was
also unable to distinguish between Kirsten personally and the
plaintiff – he
knew that ‘Keith’ was the applicant for these
rights, he said.
THE BREEDER
[12] Was Morgenzon entitled to a plant breeders’ right? It alleged
in the application form that it was by virtue of a contract
with
‘Keith Kirsten’s’. It is common cause that there was no such
contract nor was there ever an intention to enter into such
a
contract. All there was before the Registrar was a letter from
Kirsten, on the plaintiff’s letterhead, confirming that he (‘I’)
was the owner of Phasion and that he (‘I’) authorised Morgenzon
to apply for a plant breeder’s right. This then raises the
question
whether the plaintiff or Kirsten was entitled to apply for a plant
breeder’s right. The fact that a certificate had been
granted to
someone who was not entitled to it is (since the 1996 amendment) not
necessarily destructive of the plant breeder’s
right because the
right may under those circumstances be transferred to the person
entitled to it (s 33(2)(h)). In answering this
question I do not
intend to draw a distinction between Kirsten and the plaintiff
because it makes no difference to the result and
I shall assume that
whatever Kirsten did he did as an employee of the plaintiff (s
6(1)(b)).
[13] As mentioned, the application form indicated that ‘Keith
Kirsten’s’ was the discoverer of the Phasion variety and that
no
one else participated in the discovery. This is a material allegation
because in terms of the Act only a ‘breeder’ could apply
for a
plant breeder’s right. Did Kirsten then discover this allegedly new
canna? He gave the answer: he did not. He saw the plant
for the first
time during 1991 in the garden of one Kruger who was a well known
nurseryman in Bethal. Kruger was fully aware of existence
of the
variety in his garden. Kirsten, consequently and apart from his
concession that he had not discovered the variety, was not
the first
person to learn about something previously unknown and he did not
bring it to light. As an Australian expert panel has
suggested, ‘a
person cannot normally be considered the “discoverer” of a plant
if someone else provides the particulars of
its existence to that
person.’
7
[14] In addition, Kirsten at all times believed that Kruger
discovered the plant because it was growing in his garden and he was
fully aware of its existence. (There was, however, no evidence which
showed that Kruger in fact discovered it; on the contrary,
the
evidence was that Kruger received the plant from someone else some
years before.) The later events confirmed that Kirsten never
believed
that he had discovered the plant. Before the application for a plant
breeder’s right was filed, Kruger died and thereafter
before the
plant breeder’s right was granted, on 7 April 1995, the plaintiff,
represented by Kirsten, entered into a ‘Licence
Agreement’ with
one Jan Plant. Jan Plant is in actual fact Mr Jan Harm Potgieter, the
husband of a sister of Kruger, who together
with his wife lived with
Kruger until Kruger died. The agreement contains various strange
features which caused Kirsten to give contradictory
and highly
unsatisfactory evidence. Apart from the fact that Jan Harm
Potgieter’s name does not appear in the agreement, he did
not sign
it as Jan Plant or Jan Harm Potgieter but as ‘Harm’. Jan Plant is
falsely described in the agreement as the ‘original,
first and sole
inventor of the new and distinct plant variety’ being the Canna
Phasion. As such he granted to the plaintiff the
‘exclusive world
wide licence to grow, distribute and market
Canna Phasion’
.
Although Potgieter, according to his evidence, did not want anything
in respect of the exploitation of the Canna Phasion Kirsten
‘out of
the good of (his) heart’ agreed to remit a royalty of R 0.25 per
plant sold, 40% of which was to be distributed to the
SANA Bursary
Fund and 60% to a Mrs Steinmann. Mrs Steinmann happened to be
Potgieter’s daughter. It does not appear from the agreement
to whom
the royalty had to be remitted for distribution. In the event
royalties of between R10 000 and R20 000 per annum were remitted
to a
trust formed by Potgieter. The beneficiaries of the trust are the
SANA Bursary Fund, Mrs Steinmann and Potgieter’s wife. Potgieter
testified that he signed the agreement ‘on behalf of actually my
brother-in-law’s agreement with Keith’ which he said he was
entitled to do because he thought that his wife was the heir to the
movable property of Kruger and that the rights to Phasion was
part of
the movable property. Again the statement was false. His wife was one
of many legatees of Kruger. She inherited a cash amount,
the
furniture and the household utensils. Jan Plant, in his capacity as
‘discoverer’, proceeded to apply for plant breeders’
rights in
other countries through the offices of the plaintiff’s
sub-licencees and this in spite of the fact that Jan Plant and
Kirsten knew, as they admitted, that he had no claim to the variety.
[15] The plaintiff was accordingly not the discoverer of Phasion and
the statement to the contrary in the application was a material
misrepresentation without which the Registrar would not have granted
a plant breeder’s right.
8
Unfazed, the plaintiff submitted that it could rely on the fact that
it had ‘developed’ the Phasion canna. It will be recalled
that
under the Act as it then stood a person who ‘developed’ a new
variety qualified as a breeder. Assuming this to be an answer
to the
defendant’s objection that the application was flawed, the fact is
that the evidence establishes that the plaintiff did
not ‘develop’
the variety. Kruger gave Kirsten some rhizomes from the plants
growing in his garden.
9
These Kirsten planted and once satisfied with the result he sent
rhizomes to Morgenzon for testing and bulking purposes which
Morgenzon
did. This does not mean that the plaintiff or Morgenzon on
its behalf ‘developed’ the plant. It is the same plant as the one
received from Kruger. Multiplying and testing a plant, plain English
10
and the Act make clear, are not the same as developing it (cf s
14(3)). Successfully developing a market is not the same as
developing
a plant.
PUBLICATION
[16] The sorry tale of corporate and administrative bungling does not
end here. I have said that the Act required that the grant
of a plant
breeder’s right must be gazetted (s 20(2)(c)). This, in context,
means as soon as possible after the grant of the right,
i.e., as soon
as possible after the date of the certificate of grant, namely 27
February 1996. The Registrar did not gazette the
grant until 1
February 2002 which, albeit before judgment, was after conclusion of
the trial. The explanation the Registrar gave
was a lack of funds
within the Department. How much, one wonders, does an advertisement
in the Government Gazette cost considering
that all the applications
granted in the preceding seven years were suddenly accommodated in an
advertisement of no more than two
pages. It does not enhance the
image of a country that wishes to become a major economic force if,
in spite of binding international
obligations and parliamentary laws,
some state department is unwilling to find or expend a minimal amount
of money. It is not as
if the applicants for plant breeders’ rights
do not have to pay for the privilege. Indignation aside, what the
Registrar apparently
failed to appreciate is that the gazetting of
the grant of a right has legal consequences. It serves as notice to
the public of a
monopoly. The public is not required to dig into the
files of the Registrar to find whether or not rights have been
granted. And
it is no answer to the legal requirement of advertising
to say, as the Court below did, that the defendant was told of the
registration.
It is, however, unnecessary to decide whether
publication was a prerequisite for the institution of action and
whether matters could
have been put right by late publication.
NOVELTY
[17] I have mentioned that the defendant attacked the novelty of
Phasion. An application for plant breeders’ rights had to be in
respect of a ‘new’ variety (s 2(1)(a)) and a plant was deemed to
have been new if it complied with the prescribed requirements
(s
2(2)).
11
Regulation 3, as amended, stated when a variety would have been
deemed to have been new but in the process matters such as common
knowledge, distinctiveness, homogeneity and stability all became
aspects of novelty. Much evidence was led about the novelty issue.
However, as I have indicated, the evidence failed to address the real
issue namely whether the plant
as described
in the register
was new; instead the plaintiff’s commercial plant was used as the
benchmark.
[18] In any event, since the plaintiff was not the breeder of the
plant the question of lack of novelty, in principle, could not
have
arisen. What the defendant attempted to prove was that the plant had
been sold before the application date by Kruger from his
nursery to
members of the public and to Kirsten, an issue on which much time and
effort was expended. Desai J, eventually, rejected
the evidence of Ms
Clara Kruger, the main witness in this regard. In terms of the
applicable regulation (as amended) a variety was
deemed to have been
‘new’ unless, at the date of application, it had ‘been sold in
the Republic for longer than one year’
‘with the agreement of the
breeder concerned’, the ‘breeder concerned’ being the
plaintiff. Sales by Kruger were, consequently,
for purposes of
novelty irrelevant because he was not said to be the ‘breeder’
and according to the register he was not. The
evidence of Mr
Rasmussen and of Mr Rogers that they had purchased the same plant
before the application date was also in this regard
irrelevant.
Patent law novelty and plant breeders’ rights novelty are not the
same.
[19] The next question is whether Phasion was not a ‘new’ variety
because it was not
‘
by reason of any important characteristic clearly
distinguishable from any other variety of the same kind of plant, the
existence
of which is a matter of common knowledge at the time of the
application . . .’ (reg 3(1)(c)).
A variety was deemed to have been generally known for purposes of
this provision:
‘
if the variety, at the time of the relevant
application for a plant breeder’s right –
(a) was entered in an official list of varieties, or an
application for such entry is under consideration;
(b) is included in a reference collection accessible to
the public;
(c) has been precisely described in a publication which
is accessible to the public; or
(d) has otherwise come to the knowledge of the public’
(reg 3(3)).
[20] Historically, patent law drew a distinction between ‘public
knowledge’ and ‘common knowledge’. Common knowledge refers
to
the knowledge of the average person in the art. It is his working
knowledge or stock-in-trade. Public knowledge is knowledge that
is
available to the public, i.e., to which the public has access. This
distinction was clearly drawn in
Gentiruco AG v Firestone SA (Pty)
Ltd
1972 (1) SA 589
(A) 654-658.
[21] The defendant did not rely on the kind of knowledge referred to
in sub-paras (a), (b) or (c) but the evidence of its witnesses
established that persons in the horticultural world knew of a canna
with identical leaves long before the application date. Even
the
evidence of Mr Grey, a witness called by the plaintiff, was to the
effect that the plant must have been available to the public
before
the plaintiff began marketing it. Mr Rasmussen, an 89 year old
nurseryman had it in his garden since the late 1960’s. Mr
AL
Kruger, a relation of the late Kruger, knew it since 1969. So did the
late Kruger. Mr Rogers purchased it from a nursery during
the 1980’s
and used them for landscaping. Mrs Cywes had the plant in her garden
since the 1970’s. Potgieter knew it since at
least 1991.
[22] The Court below, in general terms, found this evidence
unacceptable. The problem with the finding is that the court sought
to
find the answer to the question whether the existence of the
variety ‘was a matter of common knowledge’, without paying any
regard
to the deeming provision contained in reg 3(3). Except in
relation to the evidence of Ms Clara Kruger, Desai J’s findings in
this
regard were unjustified and the criticism unfair. For instance,
Rasmussen produced a plant and testified that he had it in his
nursery
at Howick and Hilton since about 1969. Desai J failed to
appreciate that it was common cause that this canna was identical to
Phasion.
Mrs Cywes had a canna in her garden in Constantia, Cape
Town, for many years before the application date. She gave rhizomes
to one
Henrico and Henrico sold their offspring to the defendant.
These formed part of the infringing batch. Desai J nevertheless
concluded
that there was no proof that her plant was identical to
Phasion. And one of the reasons why Rogers was rejected was because,
Desai
J found, he was strongly opposed to plant breeders’ rights
because they are a money making scheme. But this misstates Rogers’
evidence. He stated clearly that he was opposed to people obtaining
plant breeders’ rights for plants that are not new, a feeling
shared by Parliament (when it made novelty a requirement for a valid
right) and by others. There is no reason to doubt Rogers’
evidence
that he had bought an identical plant at Magaliesburg and that he had
used it for landscaping in the Cape during the late
1980’s. In the
absence of cogent evidence to the contrary, this evidence was
sufficient to establish that the plant had ‘otherwise
come to the
knowledge of the public’
12
and that the plant was not distinctive. All there is was Kirsten’s
evidence that he had not encountered the plant before he had
seen it
in Kruger’s garden during 1991, and Joubert’s statement that his
office had not found the plant in a nursery during the
registration
process. This may be true but regard must be had to the fact that
cannas were not in demand at the time and it was to
be expected that
they would not have been exhibited at nurseries among the more
fashionable plants. In any event, the evidence did
not refute that of
the defendant.
CONCLUSION
[23] Although this judgment deals with issues that are somewhat more
wide-ranging than the pleadings, the additional matters are
matters
of law based upon common-cause facts. Irrespective of these issues,
the plaintiff’s claim should have been dismissed by
the Court
below. The plaintiff was not the holder of a valid plant breeder’s
right for the reasons given. The plaintiff has to
suffer the
consequence of its misrepresentations because the responsibility for
the accuracy of an application for plant breeders’
rights rest
‘fairly and squarely upon the applicant’.
13
Unlawful administrative action cannot give rise to substantive
rights.
[24] Concerning the counterclaim
14
in which the defendant claimed the termination of the plaintiff’s
rights in respect of Phasion, the rather strange
provisions of s 33(2) of the Act, as they now stand, must be
considered:
‘
The registrar may terminate a plant breeder’s right
prior to the expiry of the plant breeder’s right if—
(a) any information submitted to him or her in the
application for such a right or in connection with such an
application, was incorrect
and if such a right would not have been
granted if he or she had known that the information was incorrect;
(b) information has come to light which, if discovered
earlier, would have resulted in the plant breeder’s right being
refused;
(c) – (g) . . .
(h) the plant breeder’s right has been granted to a
person who is not entitled thereto, unless it is transferred to the
person
who is entitled thereto; or
(i) the holder of the plant breeder’s right is
ordered to terminate the plant breeder’s right by an order of
court.’
[25] What this literally means is that if a court finds that a
holder’s grant is void it must order the
holder
‘to
terminate’ the right in which event the Registrar must then
exercise a discretion which, in turn, may give rise to an
administrative
appeal (s 42). I do not accept that the section can
have such a perverse meaning. It cannot mean that the Registrar would
be entitled
to ignore a court judgment in the exercise of an
administrative discretion. In any event, on the facts of this case
there is no possibility
that the Registrar can exercise a discretion
in favour of the plaintiff under either para (a) or (b) and, as I
have said earlier,
there is no evidence that anyone could legally
benefit from a transfer under (h).
[26] Section 38 of the Act cannot assist the plaintiff. It provides:
‘
A defect in the form of any document which is in
terms of any law required to be executed in a specific manner, or in
a notice issued
in terms of this Act, shall not render unlawful an
administrative action executed in respect of the matter to which such
document
or notice relates, and shall not be a ground for exception
to any legal procedure which may be taken in respect of such matter,
if
the requirements and meaning thereof are substantially and
intelligibly set forth.’
The defects herein found were not defects in ‘form’ but in
substance and the statutory requirements were not ‘substantially
…
set forth’.
[27] Reliance on s 36(1) also provides but cold comfort. It reads:
‘
The registrar may authorize-
(a) the correction of any clerical error or error in
translation appearing in any plant breeder's right, the application
for such
a right or any document filed in pursuance of such an
application, or the register;
(b) the amendment of any document for the amendment of
which no express provision is made in this Act;
(c) the condonation or correction of any irregularity
in procedure in any proceedings before him, if such condonation or
correction
is not detrimental to the interests of any person.’
Since there are no proceedings before him, (c) has no application.
Para (b) is also not apposite because one cannot by means of an
amendment create rights where none exist and (a) is also of no use
because there is no suggestion that any of the errors (if they
are
indeed errors) are clerical errors. They are errors of substance. It
follows that the counterclaim must also succeed.
[28] In the result the appeal is upheld with costs and the order of
the Court below is set aside and replaced with an order:
dismissing the plaintiff’s claim;
terminating the plant breeder’s right in relation to Canna Phasion
PBE ZA 961360;
that the plaintiff pay the costs of the claim and counterclaim and
also the costs of the Anton Piller application 12100/99.
_______________________
L T C HARMS
JUDGE OF APPEAL
Agree:
STREICHER
JA
MTHIYANE
JA
CONRADIE
JA
SOUTHWOOD
AJA
1
The certificate gives the date of expiry as 27 February 2011 but
since the term is to be calculated in years from the date of the
certificate, this is an error: Plant Breeders’ Rights Act 15 of
1976 s 21.
2
Per Desai J. The judgment has been reported:
Keith Kirsten’s
(Pty) Ltd v Weltevrede Nursery (Pty) Ltd and Another
[2002] 3
All SA 624
(C);
2002 (4) SA 756
(C). Desai J refused leave to
appeal, which was subsequently granted by this Court.
3
Plant Breeders’ Rights Act 15 of 1976 s 47(1).
4
www.upov.int
.
It also has been the subject of amendments,
5
GG Notice R 2630 of 24 December 1980 (Reg Gazette
3116) as amended by GG Notice R 37 of 6 January 1984 (Reg Gazette
9024).
6
Reg 3(1)(c) had a similar requirement at the time.
7
‘Clarification of Plant Breeding Issues under the Plant Breeders’
Rights Act 1994’: Report of the Expert Panel on Breeding,
December
2002. www.anbg.gov.au/breeders/index.html
8
The Community Plant Variety Office of the
European Union reached the same conclusion in a decision (No A4) of
6 November 2003.
9
It is not alleged that Kruger developed the variety or that the
plaintiff was the successor in title of Kruger.
10
Encarta World English Dictionary
gives as the primary meaning
of ‘develop’: ‘to change, or to cause to change, and become
larger, stronger, or more impressive,
successful or advanced’.
There is no other appropriate meaning which can be attached to the
word in this context.
11
Fortunately, the Act itself now prescribes what novelty
means.
12
Cf
Gentiruco
at 656A.
13
Cf
Bendz Ltd & Another v South African Lead Works Ltd
1963 (3) SA 797
(A) 808F.
14
The defendant joined the Registrar for purposes
of the counterclaim as second defendant but the Registrar abides the
decision of
the Court.