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
View Parallel Citation
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 pre1996 position.) Only a "breeder" of a new variety of
plant was entitled to apply for a plant breeder's right (section 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 (section 1 s v
"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 (section 2(2)). 5 It had to be made in the
prescribed manner and be accompanied by the prescribed application fee and documents (section 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
(section 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 (section 15).
[6]
The application had to be advertised (section 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
(section 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 (section 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 (section 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
Page 185 of [2004] 1 All SA 181 (SCA)
of a contract. (The Act permitted a successorintitle of the breeder to apply as "applicant" (section 6(1)(c)).)
View Parallel Citation
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 (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 twodimensional 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 PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at
6401; Kerly's Law of Trade Marks and Trade Names 12th ed at 2712). 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 711G712B.)
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 section 2(b) that "it is clearly distinguishable from any other variety"6 and
in the words of Regulation 3(4) its characteristics "precisely describable". All this must appear from the
register.