Weltevrede Nursery (Pty) Ltd v Keith Kirsten's (Pty) Ltd

Keith Kirsten's (Pty) Ltd ("the plaintiff") held a plant breeder's right certificate for a canna variety named 'Phasion' (marketed as 'Tropicanna'), which was registered on 27 February 1996. The variety was distinctive for its vividly colored leaves combining burgundy, red, pink, yellow and deep green stripes. Weltevrede Nursery (Pty) Ltd ("the defendant") obtained an export order for Tropicana rhizomes and purchased them from other nurseries. The plaintiff obtained an attachment order pending infringement proceedings. The original application for the plant breeder's right was filed on 25 July 1994 by Morgenzon Estates (a trading name of Sapekoe (Pty) Ltd) as applicant, stating that 'Keith Kirsten's' was the 'discoverer'. However, the certificate was issued to the plaintiff instead of Morgenzon. The application lacked a proper description of the variety, and the description later entered in the register did not accurately describe the Phasion plant. Keith Kirsten testified that he first saw the plant in 1991 in the garden of a nurseryman named Kruger in Bethal, and that he did not discover it. Kruger gave him rhizomes which he planted and sent to Morgenzon for testing. After Kruger's death, the plaintiff entered into a 'Licence Agreement' with 'Jan Plant' (actually Jan Harm Potgieter, Kruger's brother-in-law) in which Jan Plant was falsely described as the 'original, first and sole inventor'. Evidence showed that the variety had been known and sold by various nurserymen and gardeners since the late 1960s.

• Whether the plant breeder's right was validly granted in the absence of an adequate description of the variety in the application and register
• Whether the certificate could validly be issued to the plaintiff when the applicant was Morgenzon Estates
• Whether the plaintiff or Keith Kirsten qualified as the 'breeder' entitled to apply for plant breeder's rights under the Plant Breeders' Rights Act 15 of 1976
• Whether the variety was 'new' as required by the Act, given evidence of prior public knowledge
• Whether misrepresentations in the application for plant breeder's rights invalidated the grant
• Whether the court could order termination of the plant breeder's right

The appeal was upheld with costs. The order of the court below was set aside and replaced with: (a) dismissing the plaintiff's claim; (b) terminating the plant breeder's right in relation to Canna Phasion PBE ZA 961360; and (c) ordering the plaintiff to pay the costs of the claim and counterclaim and also the costs of the Anton Piller application.

The ratio decidendi comprises several binding principles: (1) Like all registered intellectual property rights, plant breeders' rights must appear ex facie the register - the right granted must bear a relationship to the right applied for, and the public is entitled to rely on the register without investigating the Registrar's files. The description of the variety in the register defines the scope of the monopoly. (2) The mandatory requirement for a description of the new variety in the application is essential - an application cannot validly proceed without it. (3) A plant breeder's right certificate must be issued to the person who applied for it as required by section 20(2)(a) of the Act. (4) Only a 'breeder' as defined in the Act is entitled to apply for plant breeders' rights. A person who did not discover (i.e., was not the first to learn about or bring to light) a plant variety, and who did not develop it (i.e., change it to become more advanced), but merely multiplied existing specimens, is not a 'breeder'. Multiplying and testing a plant is not the same as developing it. (5) Material misrepresentations in an application for plant breeders' rights, without which the Registrar would not have granted the right, invalidate the grant. The responsibility for accuracy rests on the applicant. (6) A plant variety is not 'new' if it has 'otherwise come to the knowledge of the public' under regulation 3(3)(d), even if not widely available in nurseries. Evidence that multiple persons in the horticultural field had knowledge of identical plants for many years before the application date establishes lack of novelty. (7) Unlawful administrative action cannot give rise to substantive rights. (8) Section 33(2) permits court-ordered termination of plant breeders' rights where the grant was based on incorrect information or granted to someone not entitled to it.

Harms JA made several obiter observations: (1) He questioned how the Registrar could have granted provisional protection and advertised an application in the absence of any description of the variety, calling it 'a mystery'. (2) He noted that the Registrar's failure to gazette the grant until nearly six years after issuance (due to claimed lack of departmental funds) was unacceptable and 'does not enhance the image of a country that wishes to become a major economic force', though he found it unnecessary to decide whether late publication could cure the defect. (3) He observed that gazetting serves as notice to the public of a monopoly and the public is not required to investigate the Registrar's files - it is no answer to say the defendant was told of the registration. (4) He commented critically on the 'strange' provisions of section 33(2) as amended, noting the perverse literal meaning that a court finding a grant void must order the holder to terminate the right, after which the Registrar exercises discretion potentially subject to administrative appeal - stating he could not accept the section has such a meaning and that the Registrar cannot ignore a court judgment. (5) He noted the evidence of witness Joubert (a Registrar staff member) was 'hardly admissible' as the public is entitled to rely on the register, not officials' personal knowledge. (6) He criticized the 'sorry tale of corporate and administrative bungling' and the fabrication of the Jan Plant licence agreement. (7) He observed that patent law novelty and plant breeders' rights novelty are not the same, explaining the historical distinction between 'common knowledge' and 'public knowledge'.

This case is a leading South African authority on plant breeders' rights, establishing important principles applicable to all registered intellectual property rights. It affirms that registered rights must appear ex facie the register and the right granted must bear a relationship to the right applied for - the public is entitled to rely on the information in the register, not on external evidence or officials' personal knowledge. The case clarifies the meaning of 'breeder' under the Plant Breeders' Rights Act 15 of 1976, distinguishing between discovering, developing and merely multiplying a plant variety. It establishes that material misrepresentations in an application cannot give rise to valid rights, and that unlawful administrative action cannot create substantive rights. The judgment provides guidance on the 'novelty' requirement for plant varieties, particularly the distinction between common knowledge and public knowledge, and interprets regulation 3(3)'s deeming provisions. The case demonstrates the courts' willingness to invalidate improperly granted intellectual property rights despite commercial reliance, and to look beyond pleadings to matters of law based on common cause facts. It also highlights serious administrative failures in the plant breeders' rights registration system and the legal consequences of such failures.