1.

This request for a preliminary ruling concerns the interpretation of Article 96 of Regulation (EC) No 2100/94. ( 2 )

2.

The request has been made in proceedings between two companies – Club de Variedades Vegetales Protegidas and José Cánovas Pardo S.L. (‘Pardo’) – concerning the latter’s cultivation of mandarin trees of the Nadorcott variety without the holder’s consent. ( 3 )

3.

Specifically, Pardo brought an appeal on a point of law before the referring court relating exclusively to the issue of limitation. The main proceedings are characterised, in that regard, by the fact that the holder allowed the three-year period laid down in Article 96 of Regulation No 2100/94 to expire. It is established that, when the action against Pardo was brought, the holder had been aware of the acts infringing its rights and of the identity of the party liable for them for more than three years.

4.

The questions referred to the Court seek to ascertain what conclusions should be drawn from the expiry of that three-year period.

5.

For the reasons set out below, I will propose that the Court’s answer to the questions referred should be that, in the case of acts spread over time, the effects of that limitation attach only to acts committed more than three years ago. In other words, the holder retains the right to bring the actions provided for in Articles 94 and 95 of Regulation No 2100/94 in respect of acts committed during the last three years.

6.

Article 94 of Regulation No 2100/94, entitled ‘Infringement’, provides as follows:

‘1.   Whatsoever:

may be sued by the holder to enjoin such infringement or to pay reasonable compensation or both.

2.   Whosoever acts intentionally or negligently shall moreover be liable to compensate the holder for any further damage resulting from the act in question. In cases of slight negligence, such claims may be reduced according to the degree of such slight negligence, but not however to the extent that they are less than the advantage derived therefrom by the person who committed the infringement.’

7.

Article 95 of that regulation states:

‘The holder may require reasonable compensation from any person who has, in the time between publication of the application for a Community plant variety right and grant thereof, effected an act that he would be prohibited from performing subsequent thereto.’

8.

Under Article 96 of that regulation:

‘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.’

9.

The background to the dispute concerning Community protection for the mandarin tree variety ‘Nadorcott’, as set out in the order for reference, may be summarised as follows.

10.

On 22 August 1995, the company Nador Cott Protection SARL applied to the Community Plant Variety Office (CPVO) for a Community right in respect of that plant variety. The application was published in the Official Gazette of the CPVO on 22 February 1996.

11.

On 4 October 2004, the CPVO granted a Community right. That decision was published in the Official Gazette of the CPVO on 15 December 2004.

12.

On 14 April 2005, the Federación de Cooperativas Agrícolas Valencianas (Federation of Agricultural Cooperatives of Valencia, Spain) brought an appeal before the Board of Appeal of the CPVO, with suspensory effect, against the decision granting the Community right. That appeal was dismissed by decision of 8 November 2005, published in the Official Gazette of the CPVO on 15 February 2006.

13.

On 21 March 2006, the Federation of Agricultural Cooperatives of Valencia brought an action before the General Court of the European Union, this time without suspensory effect, against that decision. The General Court dismissed that action by judgment of 31 January 2008, Federación de Cooperativas Agrarias de la Comunidad Valenciana v CPVO – Nador Cott Protection (Nadorcott). ( 4 )

14.

Although Nador Cott Protection is the holder of the rights over the mandarin tree variety ‘Nadorcott’, the company Carpa Dorada has an exclusive licence for the rights relating to that plant variety. Carpa Dorada entrusted the management of its rights to Gestión de Licencias Vegetales (‘GESLIVE’) until 12 December 2008 and to the company Club de Variedades Vegetales Protegidas thereafter.

15.

Since 2006, Pardo has cultivated a grove of mandarin trees of the Nadorcott variety on a plot of land located in the area known as Alhama de Murcia (Spain) (4457 trees).

16.

On 30 October 2007, GESLIVE gave formal notice to Pardo requiring it to stop cultivating that plant variety without having applied for the corresponding licence.

17.

On 30 March 2011, the company Club de Variedades Vegetales Protegidas sent Pardo a further communication requesting it, should it be established that it was cultivating some 5000 mandarin trees of the Nadorcott variety, to cease that activity.

18.

In November 2011, the company Club de Variedades Vegetales Protegidas applied to the Juzgado de lo Mercantil (Commercial Court, Spain) for preliminary measures for a declaration of infringement.

19.

The company Club de Variedades Vegetales Protegidas brought an action against Pardo seeking a declaration that the legitimate rights over the Nadorcott variety had been infringed during the provisional protection period (from 26 February 1996 to 15 February 2006). ( 5 ) It also sought an order requiring Pardo to pay reasonable compensation of EUR 17500 excluding VAT.

20.

In addition, the company Club de Variedades Vegetales Protegidas brought infringement proceedings in respect of acts of cultivation occurring after 15 February 2006. In particular, it sought a declaration that the legitimate rights over the Nadorcott variety had been infringed from that date until the cessation of cultivation. It also sought an order requiring Pardo to cease such cultivation without the authorisation of the holder of the variety, to remove and, if necessary, destroy any plant material of that variety in Pardo’s possession, to pay it compensation in the amount of EUR 35000 excluding VAT and to publish, at Pardo’s expense, the introductory and operative parts of the judgment.

21.

The Juzgado de lo Mercantil (Commercial Court) dismissed those proceedings on the ground that the three-year limitation period laid down in Article 96 of Regulation No 2100/94 had expired. In support of its reasoning, the court found that the holder had been aware of the acts of cultivation carried out by Pardo at least since 30 October 2007, the date on which GESLIVE gave formal notice to Pardo.

22.

The company Club de Variedades Vegetales Protegidas lodged an appeal against that judgment before the Audiencia Provincial de Murcia (Provincial Court of Murcia, Spain). That court found that the infringing acts had been repeated over time and that the limitation period had been interrupted in November 2009 by the adoption of a number of preliminary measures. Accordingly, it held that only the acts of cultivation committed more than three years before the adoption of those preliminary measures were time-barred.

23.

As regards the substance, the Audiencia Provincial de Murcia (Provincial Court of Murcia) pointed out that Pardo did not dispute either the cultivation of the variety or the lack of consent of the plant variety holder, but only the amount of compensation. In order to cover the compensation payable in respect of both the infringement and the provisional protection, that court applied the sum of EUR 7 per tree, totalling EUR 31199. In addition, the court ordered Pardo to cease the infringing acts, to remove and, if necessary, destroy any plant material of that variety in its possession, including harvested material, and to publish, at its expense, the introductory and operative parts of the judgment.

24.

Pardo lodged an appeal on a point of law before the Tribunal Supremo (Supreme Court, Spain), challenging the appellate court’s interpretation of Article 96 of Regulation No 2100/94 concerning the limitation period.

25.

The Tribunal Supremo (Supreme Court) points out, in that connection, that it draws a distinction between specific infringing acts and infringing acts which continue over time, or are ‘continuous’. It refers to a recent judgment in the field of trade mark law in which it held that, where the infringement is the result of a continuous course of conduct, the point from which the limitation period starts to run is deferred for as long as the infringement continues or is repeated. It enquires whether that interpretation can be applied to Article 96 of Regulation No 2100/94.

26.

As regards the main proceedings, the referring court notes that, first, more than three years have elapsed since the holder became aware of the acts carried out in breach of its rights and of the identity of the party liable for them and, secondly, the infringing acts were ongoing when the actions provided for in Articles 94 and 95 of Regulation No 2100/94 were brought. Against that background, the referring court is uncertain whether the limitation period laid down in Article 96 of that regulation catches:

27.

In those circumstances, the Tribunal Supremo (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

28.

The request for a preliminary ruling was lodged at the Court Registry on 9 March 2018. The parties to the main proceedings, the Greek Government and the European Commission submitted written observations.

29.

The proceedings in the present case were stayed by decision of the President of the Court of 13 February 2019 pending the decision in Case C‑176/18, Club de Variedades Vegetales Protegidas. ( 6 ) Following notification of that judgment, on 10 January 2020, the referring court decided to maintain its request.

30.

I note, as a preliminary point, that the scope of the main proceedings is limited to the issue of limitation. Indeed, before the appellate court, Pardo did not dispute either the cultivation of the variety or the holder’s lack of consent. Furthermore, the appeal on a point of law which it brought before the referring court is concerned only with limitation. ( 7 )

31.

Thus, unlike the case in Club de Variedades Vegetales Protegidas, ( 8 ) the Court is not asked about the interpretation of Article 13 of Regulation No 2100/94 for the purposes of classifying the acts at issue in the main proceedings.

32.

I should point out that the questions referred to the Court in the present case relate to the first rule on limitation laid down in Article 96 of Regulation No 2100/94, namely that the holder’s actions are to be time-barred three years after the date on which the Community plant variety right was finally granted and the holder became aware of the infringing act and of the identity of the infringer. ( 9 )

33.

I recall that the rules on limitation laid down in Article 96 of Regulation No 2100/94 do not affect the existence of the plant variety right; they affect only the possibility for its holder to bring an action against the party liable for acts infringing the exclusive rights enjoyed by the holder pursuant to that plant variety right.

34.

Three interpretations have been proposed to the Court to enable it to answer the questions put to it.

35.

The first interpretation posits that, in such a situation, the limitation period laid down in Article 96 of Regulation No 2100/94 covers the holder’s actions, provided for in Articles 94 and 95 of that regulation, in their entirety, irrespective of the date of the infringing acts. Since the holder had knowledge of both the acts at issue and the identity of the party liable for them for more than three years, it forfeits all possibility of asserting its rights with regard to them. That, in essence, is the view taken by the court of first instance in the main proceedings ( 10 ) and by Pardo.

36.

Under the second interpretation, actions brought by the holder are time-barred in part only. The effects of limitation apply only to acts committed more than three years before the actions provided for in Articles 94 and 95 of Regulation No 2100/94 were brought. That, in essence, is the view taken by the Greek Government. That interpretation is also consistent, at least in part, with the approach taken by the appellate court in the main proceedings. ( 11 )

37.

Lastly, under the third interpretation, the actions provided for in Articles 94 and 95 of Regulation No 2100/94 are not time-barred at all, in the light of the fact that the acts carried out in breach of the holder’s rights were ongoing when those actions were brought. The holder would be entitled to assert its rights with regard to all the acts at issue where the party liable for them (Pardo in the main proceedings) has not brought them to an end. ( 12 ) That, in essence, is the view taken by the company Club de Variedades Vegetales Protegidas.

38.

I will begin by rejecting the third interpretation (no time bar) with an examination of the starting point (dies a quo) provided for in the first rule on limitation laid down in Article 96 of Regulation No 2100/94.

39.

I will then set out the reasons why the second interpretation (time bar in part) should be preferred over the first (time bar in full), when considering the question of the effects of that rule on limitation.

40.

By its first question, the referring court asks, in essence, whether the three-year period provided for in the first rule on limitation laid down in Article 96 of Regulation No 2100/94 can start to run even though the acts infringing the holder’s rights have not ceased.

41.

Under the first rule on limitation laid down in Article 96 of Regulation No 2100/94, the holder’s actions are to be time-barred three years after the date on which the Community plant variety right was finally granted and the holder became aware of the infringing act and of the identity of the infringer.

42.

Thus, the starting point or dies a quo is the date on which two conditions are met: (i) the Community plant variety right is granted; and (ii) the holder becomes aware of the act and of the identity of the party liable for it.

43.

More specifically, and as the Greek Government pointed out, the three-year limitation period starts to run either when the Community right is granted or when the holder becomes aware of the act and of the identity of the party liable for it, whichever occurs last.

44.

In the main proceedings, it is apparent from the order for reference that those two conditions were met, at the latest, on 30 October 2007. The Board of Appeal of the CPVO dismissed the appeal with suspensory effect against the grant of the Community right by decision of 8 November 2005, published on 15 February 2006. ( 13 ) Furthermore, 30 October 2007 marked the date of GESLIVE’s first formal notice to Pardo requiring it to stop cultivating that variety. ( 14 )

45.

That said, it becomes clear, in my view, that the third interpretation proposed to the Court, according to which the limitation period cannot start to run until the acts at issue have ceased, effectively rewrites the first rule on limitation laid down in Article 96 of Regulation No 2100/94.

46.

That first rule makes no reference at all to the date on which the acts at issue ceased. That observation is sufficient in itself to reject that interpretation, which would lead, in practice, to the addition of a third condition in order to determine the dies a quo: it would be necessary for the right to have been granted, for the holder to have been aware of the acts and of the identity of the partly liable for them and for those acts to have ceased.

47.

I should add that that interpretation would be at odds with the objective of legal certainty pursued by all rules on limitation, as the Greek Government rightly pointed out. The function of limitation periods is to ensure legal certainty, as confirmed by the settled case-law of the Court. ( 15 ) The Court has stated, in particular, that in order to fulfil that function, such a period must be fixed in advance and any application by analogy of a limitation period must be sufficiently foreseeable for a person. ( 16 )

48.

The third interpretation proposed would be contrary to the requirement of legal certainty in so far as it would be open to the holder to bring, at any time, as long as the acts at issue have not ceased, the actions provided for in Articles 94 and 95 of Regulation No 2100/94 against all of those acts, irrespective of when they were committed.

49.

In the context of the main proceedings, that interpretation would thus enable the holder to allow Pardo to cultivate mandarin trees of the Nadorcott variety for several decades before challenging it in legal proceedings directed at all acts committed in breach of the holder’s rights.

50.

Such an interpretation would clearly run counter to the objective of legal certainty pursued by the rules on limitation. I note, in that regard, that the infringer may have committed the acts complained of in good faith, that is to say, without knowing that they infringed the holder’s rights.

51.

I must also draw attention to a paradox arising from the third interpretation proposed to the Court, on a more systemic level. The second rule on limitation laid down in Article 96 of Regulation No 2100/94, which provides for a period of 30 years, does not seem to me to be applicable in a situation such as that in the main proceedings, since that rule presupposes that the holder was unaware of the acts at issue and of the party liable for them. Thus, if the third interpretation proposed to the Court were upheld, according to which the three-year limitation period starts to run only when the acts at issue have ceased, acts which continue over time and which the holder is aware of could never become time-barred under either the first rule (which presupposes that the acts have come to an end) or the second rule (which presupposes lack of knowledge on the part of the holder).

52.

In the light of the foregoing, I have little doubt that the third interpretation must be rejected. The starting point for the three-year period provided for in Article 96 of Regulation No 2100/94 cannot be made conditional on the acts at issue having come to an end; the only relevant criteria are the date on which the Community right was granted and the date on which the holder became aware of the act and of the identity of the party liable for it.

53.

For the sake of completeness, I should also point out that the criterion of ‘knowledge’ on the part of the holder must, in my view, be construed as covering any situation in which the holder knew or ought to have known of the act and of the identity of the party liable for it. If only the criterion of actual knowledge were applied, the holder would be able to defer the starting point of the limitation period indefinitely by refusing to take cognisance of the act and/or of the identity of the party liable for it. Such an interpretation is not acceptable in the light of the objective of all rules on limitation, namely to ensure legal certainty for the debtor. ( 17 ) It would be preferable, to my mind, for the wording of Article 96 of Regulation No 2100/94 to be amended so as to reflect more accurately the true meaning of that criterion.

54.

In the light of the foregoing, I propose that the Court should answer the first question submitted by the referring court as follows: Article 96 of Regulation No 2100/94 must be interpreted as meaning that the three-year period starts to run either when the Community right is granted or when the holder becomes aware of the act and of the identity of the party liable for it, whichever occurs last, irrespective of the date on which the acts may have ceased.

55.

By its second and third questions, which it is appropriate to examine together, the referring court asks, in essence, whether Article 96 of Regulation No 2100/94 must be interpreted as meaning that, where the three-year period has expired as regards acts repeated over time, the effects of limitation attach to all acts irrespective of when they were committed, or only to acts committed more than three years before the actions provided for in Articles 94 and 95 of that regulation were brought.

56.

Let me begin by stating the obvious: the rules on limitation laid down in Article 96 of Regulation No 2100/94 operate only as regards acts committed in the past. Consequently, an action brought under Article 94(1) of that regulation, seeking an order requiring the cessation, in the future, of acts infringing the holder’s rights, may not be time-barred.

57.

Thus, the question raised by the referring court calls for a determination of the effects of that limitation in relation to the past, particularly in the context of actions for payment of reasonable compensation (Article 94(1) and Article 95 of Regulation No 2100/94) or for compensation for damage caused by intentional or negligent acts (Article 94(2) of that regulation).

58.

In practice, the question which arises is as follows: where the holder has allowed the three-year limitation period to expire, does it forfeit in full the right to require payment of reasonable compensation and/or compensation for damage in respect of past acts (which corresponds to the first interpretation proposed to the Court ( 18 )) or does it retain that right in respect of the most recent acts, namely those committed during the last three years (which corresponds to the second interpretation ( 19 ))?

59.

I must point out that the wording of Article 96 of Regulation No 2100/94 does not expressly answer that question, unlike the question of the dies a quo examined above.

60.

Nevertheless, several factors militate in favour of the second interpretation proposed to the Court, according to which the holder retains the right to claim compensation for acts committed during the last three years.

61.

In the first place, Article 96 of Regulation No 2100/94 provides for the time bar of an ‘act’, not the time bar of conduct conceived as a ‘set of acts’. That use of the singular is all the more significant since the actions provided for in Articles 94 and 95 of that regulation will, in most cases, relate to a set of separate acts each of which infringes the holder’s rights. ( 20 )

62.

The use of the singular suggests that, for the purposes of applying Article 96 of Regulation No 2100/94, acts infringing the holder’s rights should be considered separately. Thus, in order to determine the effects of limitation, it is necessary to examine – separately for each act – whether the three-year limitation period has expired.

63.

In practice, the national court will have to verify, for each act of infringement, whether more than three years have elapsed since either the date on which the Community right was granted or the date on which the holder became aware of the act and of the identity of the party liable for it, whichever occurred last, on the understanding that the holder cannot have such knowledge prior to the act being committed.

64.

That means that the acts carried out during the provisional protection period, referred to in Article 95 of Regulation No 2100/94, will be time-barred before those carried out after the grant of the Community right, which are the subject of Article 94 of that regulation.

65.

That seems to me to be the approach taken in the legal literature on plant variety rights. ( 21 )

66.

In the second place, I would like to draw attention to the practical implications of an interpretation to the contrary, according to which the expiry of the three-year period laid down in Article 96 of Regulation No 2100/94 would result in all acts infringing the holder’s rights being time-barred, irrespective of when they were committed.

67.

In practice, there is a risk that that interpretation would lead to the paradoxical outcome whereby any future act of infringement would be time-barred if it formed part of a course of conduct which the holder had been aware of for more than three years, as the company Club de Variedades Vegetales Protegidas rightly pointed out.

68.

Thus, according to that interpretation, in the main proceedings, the fact that the holder allowed three years to elapse after the first formal notice dated 30 October 2007 would be sufficient to deprive it of all possibility of asserting its rights with regard to the conduct at issue, including in the future if that conduct were to continue.

69.

My view is that such an interpretation is difficult to reconcile with both the purpose and the objective pursued by Regulation No 2100/94, namely Community protection for plant varieties.

70.

I would point out, moreover, that that risk is in no way theoretical, since many acts infringing the holder’s rights in the sphere of plant variety rights form part of continuing conduct. ( 22 )

71.

In the third place, I note that the interpretation which I propose is widely accepted in relation to the limitation of infringements under patent law, which is similar to the law on plant variety rights. ( 23 )

72.

Thus, German, ( 24 ) French ( 25 ) and Belgian ( 26 ) legal literature, among others, make clear that a patent infringement must be regarded as a ‘series of infringements’ and not as a ‘continuing infringement’. ( 27 ) That approach is essentially in line with the one I have proposed above, whereby acts infringing the holder’s rights are treated separately for the purpose of applying Article 96 of Regulation No 2100/94.

73.

In the fourth place, and for the sake of completeness, I would point out that both Regulation (EU) 2017/1001 on the European Union trade mark ( 28 ) and Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks ( 29 ) contain a rule of ‘limitation in consequence of acquiescence’, which is essentially the same as the first interpretation proposed to the Court ( 30 ) – an interpretation which I have just rejected.

74.

Article 61(1) of Regulation 2017/1001 and Article 9(1) of Directive 2015/2436 provide that a proprietor who has acquiesced for a period of five successive years in the use of a later trade mark, while being aware of such use, is no longer entitled to apply for a declaration of invalidity in respect of that later trade mark, unless registration was applied for in bad faith. ( 31 ) Furthermore, Article 16(1) of that regulation and Article 18(1) of that directive also state that the proprietor is no longer entitled, in such a situation, to have the use of that mark prohibited in infringement proceedings.

75.

Thus, trade mark law includes a rule providing that the proprietor forfeits all possibility of bringing legal proceedings, including in the future, when he has allowed a period of five years to elapse since he became aware of the use of a later trade mark, whether in the context of an action for a declaration of invalidity or in infringement proceedings.

76.

The existence of that rule does not, however, call into question the reasoning which I have set out above, for the following two reasons.

77.

First, the existence of that rule is explained by two distinctive characteristics of trade mark law, which have no equivalent in patent law or in plant variety law. Unlike the latter two systems of intellectual property, the duration of which is limited in time, ( 32 ) trade mark protection is potentially unlimited in time, the onus being on the proprietor to renew his registration every 10 years. ( 33 ) From that perspective, the rule of limitation in consequence of acquiescence may be regarded as a restriction on the potentially unlimited duration of trade mark protection.

78.

Furthermore, the existence of that rule is also justified in the light of the essential function of a trade mark as being to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. ( 34 ) Limitation in consequence of acquiescence presumes, in a sense, that the essential function of a trade mark can no longer be fulfilled where the proprietor has acquiesced, for a period of five years, in the use of a later trade mark presenting a likelihood of confusion.

79.

Secondly, I note that the rule of limitation in consequence of acquiescence is the subject of express and detailed provisions in both Regulation 2017/1001 and Directive 2015/2436. In the light of its far-reaching consequences for the holder’s rights, I am of the view that the existence of such a rule cannot be presumed in the context of a system for the protection of intellectual property. Thus, in the absence of equivalent provisions in Regulation No 2100/94, it must be concluded that the protection of plant varieties does not recognise limitation in consequence of acquiescence.

80.

In the light of the foregoing, I propose that the Court should answer the second and third questions submitted by the referring court as follows: Article 96 of Regulation No 2100/94 must be interpreted as meaning that, where the three-year period has expired as regards acts repeated over time, only acts committed more than three years before the actions provided for in Articles 94 and 95 of that regulation were brought are time-barred.

81.

Therefore, the holder retains the right to bring those actions in respect of acts committed during the last three years.

82.

In view of the considerations set out above, I propose that the Court should answer the questions referred for a preliminary ruling by the Tribunal Supremo (Supreme Court, Spain) as follows: