'Tang Gold' is not essentially derived from 'Nadorcott' plant variety, finds Patents Court
Jocelyn Bosse
'Tang Gold' is not essentially derived from 'Nadorcott' plant variety, finds Patents Court
Jocelyn Bosse Friday, March 13, 2026 - Jocelyn Bosse, Nadorcott, Plant Breeders' Rights, plant varieties
In a rare plant variety rights decision, Asda supermarkets were (mostly) victorious in yesterday's judgment from the Patents Court: Nador Cott Protection SAS v Asda Stores Limited [2026] EWHC 553 (Pat).
Mr Justice Mellor held that the 'Tang Gold' mandarin that was sold by Asda was not an essentially derived variety (EDV) of the 'Nadorcott' variety. But if it were, then the owners of the UK 'Nadorcott' PVR did not have a reasonable opportunity to exercise their rights and would be entitled to obtain an injunction against further import of 'Tang Gold' into the UK.
Background
'Nadorcott' is a commercially successful variety of mandarin that was bred in Morocco. The variety has been the subject of extensive litigation, including a CJEU decision (Case C‑176/18) in 2019, discussed by the IPKat here.
Photo by Hans via Pixabay.
'Tang Gold' (or 'Tango' in some countries) is another mandarin variety that was developed by the University of California Riverside by irradiating the 'Nadorcott' variety to induce mutations. It is a seedless variety that was imported to the UK and sold in Asda supermarkets. The owners of 'Nadorcott' sued, alleging that 'Tang Gold' is an EDV of 'Nadorcott' and therefore its import and sale infringes of their UK plant variety rights (PVR).
Asda filed an application at the UK Plant Variety Rights Office (PVRO) for a declaration that the 'Nadorcott' PVR is null and void on the grounds of novelty, distinctness, and entitlement. However, in June last year, Mr Justice Mellor rejected Asda's request for a stay of the infringement proceedings before the Patents Court (IPKat here), so the trial went ahead in November. There has been no word from the PVRO about the progress of the invalidity determination.
Essentially Derived Varieties (EDVs)
A variety will be an EDV of an "inital variety" if it satisfies the definition under section 7 of the Plant Varieties Act 1997 (which is worded differently from the EU Regulation on Plant Variety Rights):
- it is predominantly derived from the initial variety [...] while retaining the expression of the essential characteristics resulting from the genotype or combination of genotypes of the initial variety,
- it is clearly distinguishable from the initial variety by one or more characteristics which are capable of a precise description, and
- except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety.
Mellor J emphasised that the statutory language derives its meaning from its context, having regard to the purpose of the provision. In the case of legislation that implements a treaty (e.g., the Plant Varieties Act implementing the UPOV Convention), the treaty only becomes relevant if the terms of the legislation are not clear but are reasonably capable of more than one meaning. Mellor J also noted that the UPOV Explanatory Notes on EDVs are not binding on member states. Finally, Mellor J noted that:
“Underpinning those issues of interpretation is the more general policy question of whether the concept of EDV should be interpreted narrowly (so as not to hinder the development of new varieties) or more broadly (to prevent so-called plagiarism).”
Both varieties share many characteristics, but Asda argued that there were differences in two essential characteristics. First, while 'Nadorcott' produces viable pollen that can fertilise other varieties to produce seedy fruit, 'Tang Gold' doesn't produce viable pollen so it cannot fertilise neighbouring varieties. Second, if 'Nardorcott' trees are pollinated, they will produce seeds (which growers avoid by planting it further away from other tress or covering the 'Nadorcott' trees in nets so that pollinators - like bees - cannot access the flowers), whereas the 'Tang Gold' fruits will not produce seeds even if they are cross-pollinated.
Comparison of 'Nadorcott' and 'Tang Gold' from [150] of the judgment.
When determining whether these are "essential characteristics," Mellor J disagreed with Asda's argument that the issue is whether or not these characteristics are essential to mandarins; instead, the question is whether these are essential characteristics of the 'Nadorcott' variety of mandarin.
Mellor J then referred to the UPOV Explanatory Notes, which say that essential characteristics "should be relevant to one of the following: the producer, seller, supplier, buyer, recipient, user of the propagating material and/or of the harvested material and/or of the directly obtained products and/or the value chain." Mellor J concluded that seediness is an essential characteristic of 'Nadorcott' and for the users of the propagating material (i.e., growers), it would be important that they do not have to worry about covering the 'Tang Gold' with netting or planting it a sufficient distance from other varieties.
Therefore, 'Tang Gold' was not an EDV of 'Nadorcott'. Mellor J observed that a different result might be achieved under the language of the EU PVR Regulation. His honour added that:
“this result also illustrates how the two concepts of ‘retain’ and ‘conform’ marry up. A dependent variety must retain the expression of the essential characteristics of the initial variety but the act of derivation can result in the addition of further essential characteristics whilst, except for those differences which result from the act of derivation, the dependent variety still conforms to the initial variety in the expression of the essential characteristics of the initial variety.”
Finally, Mellor J declined to place weight on the argument that the costs of developing 'Tang Gold' were relevant to determining whether it was an EDV.
The Cascade Principle
Although it was a moot point given his findings that 'Tang Gold' is not an EDV, Mellor J dealt with the question of whether NCP had a "reasonable opportunity" to exercise its rights, in the event that 'Tang Gold' were found to be an EDV.
Under the legislation, the sale or import of harvested material (i.e., the 'Tang Gold' fruits) would fall within the scope of the 'Nadorcott' PVR if the "harvested material [was] obtained through the unauthorised use of propagating material of the protected variety, unless he has had a reasonable opportunity before the harvested material is obtained to exercise his rights in relation to the unauthorised use of the propagating material." This is known as the cascade principle.
The cascade principle was introduced to the 1991 UPOV Convention based on advocacy of ornamental breeders who were concerned about situations where cut flowers and other harvested products (such as fruits) are grown and imported from a country that does not have PVR protection. UPOV used the terminology of "reasonable opportunity" to highlight that the PVR owner's right remains primarily over the propagating material of the protected plant variety, and harvested material is only protected where those rights could not reasonably be exercised.
In this case, the 'Tang Gold' fruits imported to the UK were mostly grown in Spain and South Africa, where 'Nadorcott' is protected by PVRs and infringement disputes are still ongoing [Merpel: but very slowly - the proceedings in Spain were commenced in 2008!]. Asda argued that there was a reasonable opportunity to exercise the rights against foreign growers. Mellor J rejected this approach because it:
“leads to a very odd result, whereby the enforcement of a UK national right in respect of harvested material imported into and sold within the UK requires the court to carry out a roving inquiry into the position in foreign jurisdictions where the harvested material was grown. Whether a UK right could then be enforced would depend on what could have been done by way of enforcement in foreign countries.”
Regardless, Mellor J considered that even if the notion of "reasonable opportunity" takes account of the situation abroad where the propagating material was used or grown, there had been no such "reasonable opportunity" in the current case. For one thing, Asda did not disclose the identities of their growers, so there was no evidence that the suppliers of Asda were the same as the defendants to the infringement litigation in Spain and South Africa. Therefore, these enforcement actions did not constitute reasonable opportunity to exercise their rights. Additionally, there was the enormous delay in those enforcement proceedings: "There is nothing reasonable in infringement proceedings being commenced 17 years ago and 11 years ago respectively and still not having reached even a first instance decision. [...] Waiting a decade or almost two decades for a trial is not something that any Court can say is reasonable."
Finally, some of the 'Tang Gold' mandarins were sourced from countries where 'Nadorcott' is not protected, such as Peru, Chile and Egypt. Asda relied on commentary and travaux préparatoires of the 1991 UPOV Convention to argue that the cascade principle only applies if there was a legally enforceable right for the variety in issue in the territory in which, and at the time when, the propagating material was used. Mellor J concluded that "unauthorised use can only occur in a territory where the holder has a plant variety right/plant breeders' right and has not given his authority." [Merpel: this is not the first time that territoriality has become a bitter point of dispute in a PVR case: see IPKat here and here].
On that basis, Mellor J concluded that the 'Nadorcott' PVR holders had no opportunity to exercise their UK rights in relation to the unauthorised use of propagating material, nor did they have a reasonable opportunity to exercise those rights in either South Africa or Spain. Therefore, if 'Tang Gold' was determined to be an EDV, the holders of the 'Nadorcott' PVR would have been able to obtain an injunction against further import of 'Tang Gold' into the UK and monetary relief for the prior import and sale of 'Tang Gold' fruit.
Final Thoughts
PVRs are rarely litigated, which means that the interpretation of the text of the UPOV Convention and national legislation has been largely a matter for breeders and other stakeholders. Their well-accepted assumptions about the meaning of the law, once scrutinised by a judge, might actually be absent from the plain statutory language.
This is a complicated case, not least because it's the first time that many of these issues have received judicial consideration in any jurisdiction. There is a lot to digest, so this Kat will be chewing on this case for a while to come. And this Kat would not be surprised to see an appeal.
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https://ipkitten.blogspot.com/2026/03/tang-gold-is-not-essentially-derived.html