Nador Cott Protection v ASDA | What the High Court’s Stay Decision Means for IP Law
In ongoing High Court Proceedings, in the Patents Court, Nador Cott Protection S.A.S (‘the Claimant’) is suing Asda Stores Limited and International Procurement and Logistics Limited (‘the Defendants’), for infringement of United Kingdom Plant Breeders’ Right number 28016, which concerns the Nadorcott variety of mandarin orange.
This is the first time the Court has considered whether a stay of Plant Variety Rights infringement proceedings should be granted during ongoing invalidity proceedings, making this a notable decision.
In this article, Stuart Southall of KANGS provides an analysis of the recent judgment delivered by Mr Justice Mellor in the High Court of Justice, Patents Court.
What is a Nadorcott Mandarin
To explain its origins, the Nadorcott mandarin is a cross between the ‘Murcott’ mandarin and an unknown variety. The origins of the Nadorcott mandarin are believed to date back to 1982, when it was discovered by El Bachir Nadori at the Institut National de la Recherche Agronomique, Morocco (the Moroccan National Institute for Agricultural Research).
The role of the Institut National de la Recherche Agronomique is to serve as the focal point of agricultural research and as an autonomous government institution within the Moroccan Ministry of Agriculture. It undertakes research into crops and livestock, with a mandate to improve genetic conservation, machinery, and technology transfer for food and crops cultivated in Morocco.
Following the discovery of the Nadorcott mandarin, an application for a European Community Plant Variety Right was submitted. In 2004, nine years after submission, the application was approved. Once approved, these applications are known as ‘Community Plant Variety Office Rights (CPVORs).’
The granting of the CPVOR meant that the mandarin was protected until at least 2029, giving a twenty-five year monopoly right. Following Brexit, separate UK rights were obtained and have been effective since 2021.
The significance of the Nadorcott mandarin is that, if grown under specific criteria, the fruit is seedless.
Nador Cott Protection v Asda
Unfortunately for ASDA, one of the products it sells is ‘Tang Gold’ which has a slightly different name in the various jurisdictions where ASDA trades.
It is obviously not an ASDA own-brand product. ASDA is merely a conduit of sale. The Tang Gold was developed by the University of California Riverside. Its significance lies in the fact that the plant producing the Tang Gold mandarin does not produce pollen, meaning the fruit does not contain seeds.
The University of California Riverside sought to apply for a US Plant Patent. That application was successful and was granted protection from 2007. Part of the reason for the dispute between Nador Cott Protection and ASDA is because, as part of the US Plant Patent application, the University of California Riverside stated, “the variety being developed from an irradiated bud of ‘W Murcott’ cultivar which had unknown pedigree, but that the cultivar W Murcott from which Tang Gold was derived may be identical to a mandarin known as ‘Afourer’.”
The issue here is that Afourer is also known as Nadorcott.
Nador Cott Protection essentially asserts that the sale of Tang Gold constitutes an infringement of its CPVOR. Given this position, Nador Cott Protection wrote to UK supermarkets to advise that sales of Tang Gold infringed its rights and invited the immediate cease and desisting of such sales.
The Court Proceedings
Owing to ASDA’s decision not to cease and desist from selling the Tang Gold mandarin, it was served with proceedings where it was alleged that ASDA was in breach of the Claimant’s UK Plant Breeders Right as registered under number 28016.
Although in the High Court, Patents Court, the litigation is being dealt with via the Shorter Trial Scheme. As a result, the trial is set for an available date from 24th November 2025, for a three to four day listing.
Having served its Defence, ASDA submitted a two-pronged application in which it sought (i) to stay the proceedings while its application (which sought to nullify the UK Plant Breeders’ Right under section 21 of the Plant Varieties Act 1997) was determined, and (ii) permission to amend its Defence.
As a means of not frustrating the proceedings, the Nadorcott Mandarin owner agreed with the majority of ASDA’s amendments but the two matters that the Court was asked to consider was:
- whether the proceedings should be stayed pending the outcome of ASDAs nullity application, and
- whether to grant permission to ASDA to amend its Defence.
Part of the argument that ASDA advanced for the reasons for the stay and the amended defence was because, in the first instance ASDA did not admit the derivation history pleaded by the Claimant. Its defence intimated that the principal issues for trial were (i) whether the Tang Gold retained essential characteristics of the Nadorcott Mandarin and (ii) whether ASDA obtained Tang Gold through unauthorised use and whether the Claimant had a right to exercise its rights before ASDAs alleged unauthorised use.
At the time the proceedings were issued in the Patents Court, there was a challenge against the Community PVR, that challenge being on the basis of novelty and entitlement. The CPVO Board of Appeal and the General Court rejected the challenge to validity. The Court of Justice of the European Union (CJEU) refused permission to appeal the decision on 14th March 2025.
Given this, ASDA applied for a declaration that the Nadorcott PVR was null and void on the grounds of novelty, distinctiveness and entitlement. Pursuant to the UK Plant Varieties Act 1997, the PVRO’s jurisdiction is limited to invalidity, suspension and cancellation of a PVR subject to judicial review. ASDA sought to stay the infringement proceedings in the Patents Court pending the invalidity application.
Outcome of ASDAs application
Mr Justice Mellor decided that a stay of proceedings was not appropriate. It appears that part of his rationale for refusing the stay was the difference between patents (as argued) and Plant Variety Rights, and the Court was not convinced that there was any significant overlap or risk of inconsistent decisions.
How Can We Assist?
Intellectual Property (IP) is a complex area of law. IP owners have an obligation to ensure that their IP is protected, but this must be done correctly; otherwise, it is possible for the IP owner to receive a claim under section 21 of the Trade Marks Act 1994.
Our intellectual property lawyers specialise in IP infringements and disputes, providing bespoke protection strategies, expert legal guidance and effective dispute resolution to meet your specific needs.
The team at KANGS is highly experienced in handling all types of Intellectual Property disputes and is ready to provide you with immediate professional assistance and support. Please do not hesitate to contact our team using the details below:
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