The Canadian Bar Association
Intellectual Property

Flower patent raises thorny legal issues

A U.S. lawsuit over the intellectual property rights accorded to flower breeders raises some interesting questions over how those rights are conferred in Canada, says Toronto IP lawyer Taras Kulish.

Kulish, a senior associate with Steinberg Title Hope & Israel LLP, says a recent article in the Toronto Star brings up some interesting questions around the differences between Canadian and U.S. laws.

The story deals with an ugly lawsuit between German grower Westhoff Vertriebsgesellschaft MBH and Proven Winners North America LL which is a major supplier of flowers and other horticulture products to Home Depot, Lowe’s and Wal-Mart Stores Inc.

At the heart of the dispute is a variety of the calibrachoa plant called Candy Bouquet — also known as Million Bells or Little Petunia — which saw sales of US$44.6 million in 2014.

Westhoff claims Proven stole their breed in February 2014 and then filed a trademark application for the name Candy Bouquet in September, scant days after Westhoff had filed its own trademark application in the US.

As a result of the dispute between the breeders, Home Depot pulled back from a supply deal and the lawsuit alleges Westhoff suffered losses from projected sales.

“The issue here is that in the U.S. you can’t patent something which grows in nature but you can patent new varieties,” Kulish tells AdvocateDaily.com. “Plant patents in the U.S are in fact obtained through the United States Patent and Trademark Office (USPTO) under the Plant Patent Act 1930 — that’s what happened in this case.”

Kulish notes that in Canada, living things can’t be patented but the Canadian Food Inspection Agency (CFIA) does issue rights to breeders under their regulations.

“It’s a three-stage process, similar to filing for a trademark,” he explains. “In effect, it confers intellectual property rights which you can then license to another party, but it is not done through the Canadian Intellectual Property Office (CIPO).”

The regime also protects seed manufacturers who develop insect- and weed-resistant varieties of food plants.

“It’s important to know that there are protections under the laws for Canadian breeders,” Kulish says. “It’s a different mechanism but in the end the protection under the law is there.”

Still, he says, despite the constant pressure to homogenize the two cultures, U.S. and Canadian laws still have differences worth noting, if only to raise awareness and maintain a distinct culture.

“It’s important people know that in Canada, genetically modified plants are not actually patentable,” he says. “The position of CIPO is that ‘lower life forms’ including single cells, cell lines and cell clusters, such as moulds and yeasts, are patentable.”

However, Kulish says, “higher life forms” such as plants are not patentable but they are protected under the Plant Breeders’ Rights Act administered by the CFIA. New plant varieties can be protected for up to 25 years for a variety of trees and vines including their rootstocks, and all other varieties of plants obtain 20 years of protection.

Kulish notes that plant growers must keep in mind various different IP strategies to protect their interests in new plant varieties, including patent protection in the U.S., Plant Breeder’s Rights in Canada, and trademark registration before both CIPO and the USPTO.

 

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