ECJ Ruling: Title-holder’s Knowledge about Infringement, Infringer’s Identity Triggers Prescription
Judgment of the Court (Seventh Chamber) of 14 October 2021 - José Cánovas Pardo SL v Club de Variedades Vegetales Protegidas.
On October 14, 2021, The European Court of Justice (hereafter, ECJ or the Court) closed the next chapter in the “Nadorcott saga”. In the new judgment, the Court clarified the scope and the triggering point of prescription under Article 96 of Regulation (EC) No 2100/94 (hereafter, “Basic Regulation” or “BR”) for claims against acts of infringement of an ongoing nature. According to the judgment, the triggering of the three-year prescription period, during which a title-holder can bring charges against an alleged infringer, starts from the moment the title-holder has knowledge of the infringing act and the infringer’s identity.
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The factual background of the ruling is the same that characterized the ECJ’s previous judgment issued on 19 December 2019 in case C-176/18. In fact, it arises from the same request for a preliminary ruling by the Tribunal Supremo (the Supreme Court of Spain). However, this time, ECJ was called upon to rule on Article 96, Basic Regulation relating to the prescription for claims pursuant to Articles 94 and 95 BR. In short, the Court was asked to pronounce on the scope of prescription period under Article 96 BR for claims against acts of infringement of an ongoing nature.
Although more than three years passed between the date on which Pardo, the unlawful cultivator of the Nadorcott variety, was identified and received formal notice from Geslive (the former legal entity managing the IP rights for that variety) and the date on which Club de Variedades Vegetales Protegidas (CVVP, which took over their management) brought the infringement proceedings, the illegal act was still carried out when the dispute began.
The underlying issue of the Tribunal Supremo’s request for a preliminary ruling on this matter was, therefore, whether, according to the ECJ case law, in case of ongoing acts of infringement, the aforesaid period of prescription of three years pursuant to Article 96 BR is extended for as long as the act of infringement continues; and thus, differences exist in the way the limitation periods are calculated in case of occasional acts of infringement or ongoing acts. The doubt by the Tribunal Supremo arose from the fact that Spanish case law makes a clear-cut distinction between occasional and ongoing acts of IP right infringement, providing for an extension of the prescription terms for the latter. The purpose of the inquiry was thus to ascertain, whether the infringement proceeding brought by CVVP should have been considered inadmissible in its entirety, being a late submission under Article 96 BR.
The Court, keeping strictly to the wording of the provision, emphasized that Article 96 BR outlines two conditions for determining the period from which the prescription period begins, one preceding the other: “an objective event, namely when the Community plant variety right has finally been granted, and (…) a subjective event, namely when the holder of that right has knowledge of the act of infringement and of the identity of the party”. The relevant date is the date of the event that has last occurred. Hence, Article 96 BR “cannot be interpreted as meaning that the end of the act of infringement be regarded as the event from which the period of prescription for claims pursuant to Articles 94 and 95 of that regulation starts to run”.
The Court´s reasoning relies on the fact that Article 96 BR “does not (…) specify further whether the extent of the duration of the acts of infringement of the holder´s rights or the ongoing nature of such acts should be taken into account”. Nor it contains any “reference or even allusion to the notions of duration of the infringement or of the ongoing nature of the act of infringement”.
According to ECJ, then, “the three-year period of prescription set out in that provision for claims pursuant to Articles 94 and 95 of that regulation starts to run, not from the time when the acts of infringement on account of which those claims are brought have come to an end, but from the date on which the holder of the Community plant variety right has knowledge of those acts and of the identity of the party liable”.
ECJ also pointed out that this interpretation ensures legal certainty. If interpreted otherwise, the titleholder could bring an action up to three years after the end of each act as long as the infringing activity continued. Such an interpretation would definitely not contribute to the legal certainty.
Likewise, the Court stated that, for the purposes of applying Article 96 BR, “each act of infringement corresponding to the acts listed in Article 13(2) of that regulation must be taken into account individually, irrespective of whether it is repeated, ongoing or forms part of a set of acts”.
Therefore, the ball goes back now to the Tribunal Supremo, who will establish if CVVP fulfilled the time-bar provided for by Article 96 BR for each act of infringement claimed against Pardo.
This is likely to be continued...
 Article 96 of the Basic Regulation reads as follows: “Claims pursuant to Articles 94 and 95 shall be time barred after three years from the time at which the Community plant variety right has finally been granted and the holder has knowledge of the act and of the identity of the party liable or, in the absence of such knowledge, after 30 years from the termination of the act concerned”.