17 December 2019

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Plant Breeder’s Rights (PBRs) are generally not as well-known as other forms of intellectual property rights such as patents, trade marks, copyright and designs. A recent Federal Court order highlights the benefits and protections of PBRs as an important intellectual property right. The infringement declarations in Mountain Blue Orchards Pty Ltd v Chellow & Anor[1] may be the catalyst for more green shoots to sprout with protection and enforcement of PBRs.

What are plant breeder’s rights?

PBRs are a form of intellectual property right which provide exclusive commercial rights for registered varieties of plants, including new varieties of plants and certain recently exploited varieties. PBRs can also exist in essentially derived and dependent varieties of plants. PBRs apply for 20 years for most plant species and extends to 25 years for vines and trees.

Like other forms of intellectual property rights, PBRs grant certain exclusive rights. These rights include rights to sell the plant material, produce and reproduce the plant material, and condition the plant material for the purpose of propagation.

If wondering how PBRs work in practice, consider the cabernet sauvignon grape, which arose from a chance crossing between the cabernet franc and sauvignon blanc grapes. More recently, Malcolm Cleggett and Anne McLennan of Cleggett Wines have propagated a white cabernet sauvignon grape variety “shalistin”, which they have been able to licence to other growers to cultivate.

In the Mountain Blue Orchards case, Mountain Blue Orchards had successfully protected one of its blueberry variants as a PBR. The Federal Court found that a blueberry grower, Jason Chellew, had without the licence or authority of Mountain Blue Orchards, produced and reproduced propagating material of a variety a blueberry which infringed the PBR of Mountain Blue Orchards. The Federal Court awarded Mountain Blue Orchards $290,000 on account of compensatory damages, additional damages, interest and costs in respect of the proceeding and the infringements.

Plant Breeders Rights Act

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (the IP Amendment Act) introduced a number of amendments to Australia’s intellectual property laws. Relevantly the IP Amendment Act introduced the following changes to the Plant Breeder’s Rights Act 1994 (Cth) (the PBR Act) with effect from 24 February 2019.

  • Permitting the Federal Court and Federal Circuit Court to award additional damages under the PBR Act when a plant breeder’s right in a plant variety is infringed.
  • Providing a definition of “exclusive licensee” and allowing exclusive licensees to initiate infringement actions.

The Mountain Blue Orchards case is significant in that it is the first time the Court has awarded additional damages after the introduction of the IP Amendment Act. This brings the PBR Act into line with other intellectual property legislation in Australia which provide that additional damages may be awarded in certain instances, such as where an infringement is flagrant.

With changes in climate affecting various parts of Australia, there is an incentive for those in plant-based industries to develop new varieties to better suit new climatic conditions. The Mountain Blue Orchards case also sends a strong reminder to those in industries relying on the development and propagation of plant varieties to secure important and valuable PBRs as part of a robust intellectual property protection and commercialisation strategy. It also provides comfort to those spending time and resources to develop PBRs that these are enforceable, with damages in line with other forms of intellectual property.

The recent amendments to the PBR Act, as applied in the Mountain Blue Orchards case, mean that those wishing to produce or reproduce propagating material of a plant variety protected as a PBR are risking the grapes of wrath, or more precisely, the enforceable wrath of the grape grower.

This memo presents an overview and commentary of the subject matter. It is not provided in the context of a solicitor-client relationship and no duty of care is assumed or accepted. It does not constitute legal advice.

© Moulis Legal 2019


[1] Mountain Blue Orchards Pty Ltd ACN 068 706 650 v Jason Richard Chellew & Anor (Unreported, FCA No. QUD184/2019 Greenwood J, 11 October 2019).