[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
View Parallel Citation
in the Government Gazette of 9 December 1994. How that could have happened
Page 186 of [2004] 1 All SA 181 (SCA)
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 (sections 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 section 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
View Parallel Citation
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
Page 187 of [2004] 1 All SA 181 (SCA)
someone who applies in his own name as successorintitle 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 (section 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 (section 6(1)(b)).
[13] As mentioned, the application form indicated that "Keith Kirsten's" was the discoverer of the Phasion variety