Calcutta High Court: Civil Courts Cannot Determine Validity of Variety Registration under Plant Varieties Protection & Farmers Rights Act

Calcutta High Court: Civil Courts Cannot Determine Validity of Variety Registration under Plant Varieties Protection & Farmers Rights Act

The Calcutta High Court has observed that Section 89 of the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (PPVFR Act/ the Act) that a Civil Court would not have any jurisdiction over any matter which the Registrar has the power to determine.

The division bench of Justices IP Mukherji and Biswaroop Chowdhury were adjudicating a suit filed by the appellant- Pan Seeds Pvt. Ltd. who preferred an appeal against a District court order alleging that the judge overstepped his jurisdiction at the injunction stage by going into the question of validity of registration of a registered plant variety.

On 2nd March, 2009 the appellant had obtained a registration of its trademark ‘JAMUN’. They had also obtained registration of the mark ‘PAN 804, JAMUN’ on 12th August, 2016, both under the Trade Marks Act, 1999.

The contention of the appellant was that the respondent was using, selling, and producing a variety of seeds under the name JAMUN and DURONTO which was identical to theirs. The identity lied in the color of the stigma, which was white in both cases. The appellants pleaded that the respondents were thus, guilty of infringement of the exclusive right of the appellant, acquired by them on registration of their variety.

Appellants approached the District Court seeking reliefs such as a perpetual injunction against the respondents, which the District Court allowed vide an ex parte ad interim order.

Consequently, the respondents approached the High Court who asked the Trial Court to re-examine the injunction application from the motion stage.

The Trial Court proceeded to hear out the application before the injunction application. The appellant contended that the learned judge ought not to have done so as this Court had only directed it to consider the injunction application. However, the said application was dismissed.

The bench at the outset noted that the appellant was the breeder of the plant variety PAN 804 and further on 23rd August, 2010 they had filed an application for registration of this variety under the PPVFR Act, 2001.

The Court noted that the variety was tested which included the DUS testing (Distinctiveness, Uniformity and Stability) under Section 19 by the registry read with the PPVFR Regulations, 2006 and PPVFR (Criteria for Distinctiveness, Uniformity and Stability for Registration) Regulations, 2009.

These tests were carried out by the registering authority to ascertain the distinctiveness, uniformity and stability of the variety, which are the essential requirements to be fulfilled by an applicant to claim registration. On prima facie satisfaction with the above characteristics of the appellant’s PAN 804 variety, the registry advertised this application in the journal to invite any opposition to its registration. No opposition forthcoming, on 28th May, 2008 PAN 804 variety was registered under Section 24.

The Court on perusal of Section 28 of the said Act, stated that it confers on the breeder of a registered variety an exclusive right to sell, market, distribute, import or export etc. the variety.

“If you consider the definition of ‘variety’ under Section 2(za) and “propagating material” under Section 2(r), you will find that plant variety includes the propagating material which in turn includes the seeds. In other words, registration of a variety would confer exclusive right on the breeder over the plant as well as the seeds,” the Court observed.

Thereafter, the Court compared the said provision with Section 28 of the Trade Marks Act, 1999 and stated that the registration of a trademark gives the proprietor the exclusive right to use it, provided the registration is valid.

Therefore, the Court held that there is no such condition in the PPVFR Act, registration by itself gave the appellant the exclusive right to produce and deal with the variety, not subject to fulfilling the validity test.

The Court highlighted that Section 89 of PPVFR Acts like its corresponding Section 93 in the Trade Marks Act, 1999 and imposes a bar on the Civil Courts to determine any matter over which the authority or the Registrar has jurisdiction.

In this regard, the bench avowed, “Once a plant variety is registered under Section 24, it is not subject to the test of validity by the civil courts. If it is not so subject, even prima facie it could not have gone into that question. Only the Registrar or the authority under the Act has the power to rectify the register or cancel the registration on the ground that a variety’s registration is invalid. No such order from any authority declaring the registration invalid or even prima facie invalid is on record.”

With respect to the argument of the respondents that under Section 76 of the said Act the Criminal Court can go into the validity of registration of variety prima facie, a civil court has similar power, was without merit, the Court deemed.

“The criminal court cannot make any declaration or pass any injunction in civil matters. Now, if in a criminal case the validity or invalidity of registration would determine conviction, the Court cannot hold two trials to try one alleged offence. If the variety is registered and on that basis the plea of invalidity is rejected and the accused convicted and thereafter in a civil proceeding, the registration is held to be invalid, the case cannot be reopened to set aside the conviction.”

The Court opined that once the appellant has been able to register its variety, it is entitled to protect it by restraining others from growing, selling, marketing or otherwise dealing with the said variety.

The Trial Court could only go into the question whether the appellant and the respondents’ varieties were similar, for the purpose of consideration whether injunction should be granted, stated the High Court.

The High Court remarked the Trial Court had wrongly exercised its jurisdiction by going into the prima facie case on the question of validity of the appellant’s registration.

Accordingly, the Court allowed the appeal and ordered an injunction against the respondents, restraining them from breeding, growing, selling, marketing or otherwise dealing with the plant variety PAN 804 including the seeds till the disposal of the suit.