KANCELARIA RADCÓW PRAWNYCH
DYNASTIA
mgr Jerzy Dariusz Cieślak
42-200 Częstochowa , ul. Kościuszki 14/8
Tel/Fax ( 0-34 ) 324 86 09 , Tel. kom. 0607163463
e-mail : jdc@wp.pl
PROBLEMS WITH UNFAIR COMPETITION OF PLANT
VARIETY RIGHTS – THE NEED FOR CHANGE
I.
INTRODUCTION
For over 3 years “DYNASTY” Law Firm of Częstochowa has been involved
in provision of legal services and representation of plant breeders from Germany
and the Netherlands before Polish courts.
The basic scopes of legal services and proceedings in which we represent
clients from the aforesaid countries include primarily:
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criminal proceedings carried out through the agency of the police and public
prosecutor’s office and then by criminal courts – for punishment for
infringement of plant variety rights
commercial proceedings against unfair competition before commercial courts –
for ceasing infringements of plant variety rights
civil proceedings before civil courts – for payment of licence fees and for
damages
drafting and negotiating licence agreements concluded with Polish breeders
negotiating and concluding agreements (settlements) without taking legal action.
We handle legal actions within the scopes outlined above in the whole territory
of Poland, with special consideration given to areas around big cities like Cracow,
Łódź, Warsaw, Poznań or Toruń, where many plant producers are located.
It is to be noted that actions for enforcement of foreign breeders’ rights are now
becoming more and more effective, especially as regards the promptness and efficiency
of police actions.
Reading the program of the seminar which I have the pleasure to attend I
observed that the theoretical issues concerning the essence of plant variety rights will be
presented in detail, undoubtedly, in an interesting way by speakers during the later part
of the seminar.
Therefore, I should like to share with you only my knowledge and experience
which I gathered while handling directly police and court proceedings aimed at
enforcement of plant variety rights of foreign breeders – in case of infringement of such
rights by Polish plant producers.
II.
LEGAL BASIS
Legal regulations applied in the work of DYNASTY Law Firm in enforcement
of claims arising from infringement of plant variety rights are classified in three
categories:
1.
Business Law regulations
Legal provisions within this scope of law are included in the Unfair Competition
Act.1 According to this Act, an act of unfair competition is an illegal action or action
incompatible with good customary practice if it threatens and violates interests of
another entrepreneur or customer. Unfortunately, the special provisions of this legal Act
do not contain any regulations directly applicable to protection of plant variety rights.
In this situation, in order to be able to apply the provisions of the Unfair Competition
Act it is necessary to prove to infringers that they have committed either an action
incompatible with the good business practice or breach of legal provisions included in
other legal acts (mainly in the Plant Variety Rights Act). The main direction of actions
based on provisions of the Unfair Competition Act is to claim cessation of infringement
of exclusive plant variety rights and to obtain an appropriate court order / judgment in
this respect.
2.
Criminal Law regulations
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Plant Variety Rights Act2
Provisions of this Act constitute the core legislation describing the scope of
granting exclusive plant variety rights to their owners, enforcement and protection
of these rights. They describe also the conditions and procedure of granting licences
to use these exclusive rights to any third parties. The most important, however, for
the judiciary practice, is that this Act contains penal provisions imposing penalties
on the persons guilty of infringement of exclusive plant variety rights (Art. 37).
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Seed Production Act3
Provisions of this Act complement the provisions of the Acts described above
and they regulate the matters of production, evaluation, sale and control of seed
(sowing) material of crop plant species. In Art. 70 of this Act penal sanctions are
described imposing a penalty on persons guilty of breach of provisions of this Act.
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Penal Code4
Fundamental penal provisions being in force in the Republic of Poland are
applied in the situations where findings of the fact indicate that the offence of dealing in
stolen goods was committed i.e. the person receiving the protected variety material was
aware of the fact that the material was being purchased from the person who had
produced it illegally i.e. (Art. 291 or 292 of the Penal Code) or if the infringement of
plant variety rights was committed by an organized criminal gang. In special cases,
when it is possible to prove that the intention of fraudulent seizure of property was
present in the perpetrator’s actions, the provision of Art. 286 of the Penal Code,
regulating the offence of fraud, is applicable.
1
Unfair Competition Act of 16 April 1994 (Official Journal of Laws No. 153/03 item 1503 with later
amendments.
2
Plant Variety Rights Act of 26 June 2003 (Official Journal of Laws No. 137/03 item 1300)
3
Seed Production Act of 26 June 2003 (Official Journal of Laws No. 137/03 item 1299 with later
amendments)
4
Penal Code – Act of 6 June 1997 (Official Journal of Laws No. 88/97 item 553 with later amendments)
3.
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Civil Law regulations
Unfair Competition Act
Within the scope of the Civil Law, provisions of the Unfair Competition Act
cover claims against the parties infringing plant variety rights for redress of the damage
caused, restoration of the original status, reimbursement of the benefits obtained and
removal of results of illegal actions.
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Civil Code5
Fundamental civil law provisions being in force in the Republic of Poland are
applied mainly to the proceedings whose scope includes enforcement of licence fees
from plant producers – both from those who acquired licence rights legally but ceased
to pay licence fees and from those whose illegal propagation of plant varieties was
disclosed and covered by an appropriate licence agreement or in cases where none of
these conditions were met.
4.
International law provisions
Council Regulation (EC) No. 2100/94 of 27 July 1994 on
Community plant variety rights
Directive No. 2004/48/EC of the European Parliament and the
Council of 29 April 2004 on the enforcement of industrial property rights
(auxiliary)
It should be emphasized that since 1 May 2004 i.e. since the date of Poland’s
accession to the European Union the industrial property rights have not been
applied to the plant variety rights.6 Within this scope, norms of the aforesaid Plant
Variety Rights Act are applicable as special regulations (lex specialis).
III.
LEGAL AND PROCEDURAL PROBLEMS IN COURSE OF
PROCEEDINGS AGAINST UNFAIR COMPETITION
Major problems appearing in course of both police and court proceedings
handled by our Law Firm have been as follows:
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judicial functionaries (policemen, judges, public prosecutors) do not have
sufficient knowledge of the issues of the plant variety rights law,
due to this lack of knowledge judges are afraid and reluctant to institute and
carry out these proceedings,
court proceedings in business and civil matters are slow, there is little coherence
in procedural acts and there is no professional determination in course of the
proceedings,
judges and public prosecutors reduce to minimum the scope of means of
evidence available in individual cases, both criminal and civil ones,
judicial functionaries in Poland are not aware that the secured material
evidence can be verified by opinions of experts and specialists of COBORU
(Research Centre for Cultivar Testing) in Słupia Wielka,
Civil Code – Act of 23 April 1964 (Official Journal of Laws No. 16/64 item 93 with later amendments)
Industrial Property Rights Act of 30 June 2000 (Official Journal of Laws No. 119/03 item 1117 with
later amendments)
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IV.
judicial functionaries are not aware of the availability of professional assistance
of the staff of the State Plant Protection and Seed Production Inspectorate with
procedures of securing and checking plant material,
attorneys of the accused or defendants tend to obstruct the prompt and efficient
investigation of cases of infringement of plant variety rights,
courts passing decisions in these cases impose small penalties on the accused
which has hardly any preventive effect on the infringers and third parties (does
not prevent future infringements of plant variety rights),
public prosecution and judicial authorities underestimate the importance,
meaning and social harmfulness of infringements of plant variety rights and tend
to treat them as matters which do not deserve priority treatment,
judicial functionaries fail to recognize the importance of the proper protection of
plant variety rights for customers and consumers (end users) reflected in
provision of guaranteed proven brand-name plant material,
judicial functionaries fail to notice the effects of infringements of plant variety
rights (by illegal propagation) which involve restricted access to the market for
the breeders’ own legal plant material - as the element of unfair competition,
judicial functionaries have to be constantly persuaded that an unfair competition
act is also such illegal marking of the produced material (or lack of it) which
may deceive the customers about its origin or quality,
provisions of the Unfair Competition Act are not compatible with the special
nature of the plant variety rights law – there are no clear norms and sanctions.
We have to apply general norms often leading to different interpretations in
particular matters,
the Unfair Competition Act lacks penal provisions related directly the special
nature of infringements of plant variety rights,
the Polish Competition and Consumer Protection Office does not take any
initiatives and does not provide support in procedural actions for plant variety
rights protection.
SCOPE OF NECESSARY CHANGES
The problems described in the previous section provoke some suggestions of
necessary changes within the following scopes:
1. Within the scope of legislative changes
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Infringements of plant variety rights in the penal sense should be included into
the category of offences and not misdemeanours (i.e. deeds treated more
leniently). Consequently, the range of punishments imposed will be extended,
the punishments will be tougher and the period of prescription of prosecution of
these offences will be longer.
The statutory definition of unfair competitions acts should be explicitly and
precisely broadened to include infringements of plant variety rights. It will lead
to better understanding of these issues by judicial authorities and will make the
application of law uniform throughout the country.
Offences under the penal provisions of the Unfair Competition Act should be
classified as offences subject to public prosecution and infringements of plant
variety rights should be included in this category. So far all violations of the
provisions of the aforesaid Act are prosecuted only on a petition of the injured
party.
2. Within the scope of judicial practice
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Applicable means of evidence should be extended by motions for obtaining all
information about the circumstances of the infringement of the plant variety
rights from the defendant (right to information). It will allow to reveal all cases
of infringements more promptly and uniformly (within one court proceedings).
Judicial authorities should apply the security of claims more widely before the
action is brought to court (securing claims) or while the action is pending (by
securing the evidence). It will allow to simplify court proceedings to a
considerable degree at a later stage and will minimise their costs.
Information on means of evidence available (possibility of comparative tests of
the discovered and illegal varieties) from the Research Centre for Cultivar
Testing should be propagated in the judicial institutions throughout the country.
At the moment very few judicial functionaries are aware of the existence of this
Centre.
3. Within the scope of actions of plant variety right owners
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Plant variety right owners should endeavour to draw up and conclude explicit,
precise and detailed licence agreements with plant producers all over Poland. It
will allow to simplify considerably any possible court proceedings in case of the
licensees’ failure to comply with the terms and conditions of the agreement.
If the situation allows, plant variety right owners should conclude written
arrangements (settlements) with Polish plant producers, setting forth the scope,
conditions and dates of overdue or payable licence fees. It will allow to speed up
considerably the enforcement of claims in future.
Breeders (plant variety right owners) should take joint and consistent measures
towards the enforcement of fulfilment of obligations under licence agreements
by Polish plan producers. In many cases it will allow them to avoid timeconsuming court proceedings instituted by each breeder himself.
EU breeders should act in Poland through professional and dynamic commercial
representatives. Notwithstanding the benefits of strictly commercial nature,
their actions will be more efficient and if necessary, professional legal assistance
will be possible in the enforcement of their rights in court.
V. CONCLUSIONS
All the problems presented above (obviously excluding proposals, draft bills or
lobbying for legislative changes) may and should be overcome by consistent,
determined and effective assertion of claims before Polish judicial authorities.
Such a consistent and joint effort of many EU breeders at the same time will:
 “accustom” the police, public prosecutors, courts and government agencies to
the matters connected with the necessity of absolute protection of plant variety
rights (they should regard it as standard practice);
 force police officers, public prosecutors, courts and government agencies to
acquire in-depth knowledge of plant variety rights and experience in handling
these matters,
 lead to effective and prompt application of the available means of evidence and
security – efficient elimination of illegally produced plant material from sale
 allow EU breeders to obtain concrete judicial decisions concerning plant variety
rights which will considerably facilitate the assertion of these rights in individual
cases before courts throughout Poland.
Waiver of determined enforcement actions by breeders – plant variety owners,
will deprive them of any legal protection because in the current legal status prosecuting
authorities do not start ex officio proceedings against plant producers infringing plant
variety rights and courts, obviously, wait for either an action of a public prosecutor or
the police or for a suit filed by the injured parties.
The experience of the administration of justice in the area of plant variety rights
so far shows that only consistent, long-term information and then enforcement actions
throughout the country will lead to the results satisfactory for you.
In this way, acting consistently and with determination, the world manufacturers
of IT and audio-visual equipment and copyright owners achieved a considerable
improvement of protection of their intellectual property rights in Poland.
I think, therefore, that the joint effort of plant variety right owners, their Polish
representatives and attorneys-at-law as well as institutions responsible for control,
supervision and prosecution of infringements of rights in this area will bring about
marked progress so that every following meeting, like the one today, will be an
opportunity for a review of sales results and not for complaining about the defective law
and errors in its application.
Częstochowa, 2006.04.05.
RADCA PRAWNY
mgr Jerzy D. Cieślak