Counterfeit fruits and vegetables are nothing new in the fresh produce industry.
In 2018, Chinese courts prosecuted 13 defendants for selling nearly 1.1 million pieces of fruit under the brand names Dole, Zespri and Sunkist in the country. In 2023, International Fruit Genetics won a case in China against a producer who illegally propagated, grew and sold table grapes under the Sweet Sapphire trademark.
Consumers sued two companies for misrepresenting the contents of canned tomatoes, indicating the cans contained the San Marzano variety. These companies used roma tomatoes and other varieties but sold the cans at a higher price.
In recent months, the fresh produce industry has been involved in several international intellectual property, or IP, cases where courts ruled that growers planted illegal proprietary varieties.
Variety management companies say this is, unfortunately, just a normal part of new variety management and releases and that enforcing each variety’s IP rights ensures the best quality produce for consumers.
“It first and foremost builds confidence with the customer that when they buy this brand, the experience with that piece of fruit will be consistent, the tastes will be consistent and they can count on that,” said Christopher Palumbo, director of Goldenberry Farms.
In March, an Italian judge ruled in favor of Sun World International in four separate cases against unlicensed table grape growers. In April, Sun World stopped unauthorized individuals from misrepresenting vines from the company’s Autumncrisp-branded grapes on TikTok.
Also in April, Miami-based Goldenberry Farms filed a suit in a federal court in the U.S. for damages and trademark infringement for its Sugar Mango miniature mangoes.
In July, Bloom Fresh actioned a Peruvian grape grower to remove about 271 acres of illegally planted proprietary table grape varieties and pay a substantial fee.
In November, courts ordered an Italian grower to remove illegal plantings of Bloom Fresh varieties. The grower faces a civil case on damages related to the plantings.
Importance of maintaining IP
Alanna Rennie, chief legal officer for global fruit breeder Bloom Fresh International, said the breeding industry established plant variety rights, or PVRs, in the 1950s or 1960s as plant breeding began to take off. The objective of the PVR system is to incentivize investment into innovation to bring improved and higher-performing varieties to farmers, retailers and consumers.
“This is something that we really embrace in our business and through means beyond PVR and trademark,” she said.
Finding infringements and enforcing PVRs is a priority for variety management companies, said Michael Stimson, vice president of intellectual property and general counsel for Sun World.
Stimson said Sun World files for plant patents and PVRs with each new commercialized variety. He said these help to establish that the new variety is distinct, uniform and stable.
Sun World files a PVR in each country where the varieties are available. Ot brands each variety with registered trademarks in the countries where the variety is grown as well as those where it is imported.
“There isn’t much point in having a PVR if you don’t enforce it when you learn of an infringement,” he said. “Our company policy is to support our customers and licensed producers and to pursue every infringer we find and, ideally, to seek either a court order or a settlement agreement that requires the removal of the infringing plantings.”
Stimson said enforcement comes with both costs and the need for resources. Sun World hires contractors to visit wholesale and retail markets in countries to look for suspicious fruit. These contractors will send suspicious fruit to labs for a DNA analysis to see if it infringes on one of Sun World’s PVRs.
“Even when we find infringement, it is a challenge to find the infringers,” he said. “We can sometimes identify the distributor through the retailer and the producer from the distributor. We also follow up on tips we receive from our licensees and have started using drones operated by licensed investigators to assist in identifying infringers.”
Rennie said Bloom Fresh and many other breeders double down on IP enforcement efforts. Advancements in technology, industry collaboration on investigation and surveillance and courts with greater awareness and experience in handling plant breeder’s rights cases assist in these efforts by breeders.
Bloom Fresh, Sun World and Grapa Varieties formed the Breeders’ Alliance several years ago, in which these table grape breeders pool resources and coordinate surveillance activities in key markets worldwide to efficiently identify infringing material. Rennie said these efforts have enabled members to save costs on investigation and expand surveillance coverage.
Rennie said Bloom Fresh also often learns of infringement activity from licensed growers.
“They comply with the license agreements, they pay the royalties, so they’re at a competitive disadvantage if there’s an illegal grower,” she said. “Enforcement is important to protect the people that are doing the right thing as well, and to ensure that the quality of the produce marketed under our brands is maintained. Retailers and marketers are paying greater attention to infringements in their supply chains, which is also assisting with stamping out infringement.”
Why this happens
Rennie said several factors contribute to these IP infringement cases. Sometimes, it’s a lack of awareness on a grower’s part that a variety is protected.
“That’s a task for us in the international breeding communities to educate growers about IP protection,” she said.
Palumbo said that sometimes, too, someone will accidentally call fruit by a trademarked name.
“They have heard the name so much, they assumed it was common, and maybe they misname their product,” he said.
And others choose to ignore IP protections, which is much more dangerous. Rennie noted that in these cases, growers try to avoid paying royalties. She said this is a disadvantage to the growers who pay royalties and to the fresh fruit industry, as it stifles innovation and hampers breeders from bringing better, higher-performing varieties to the market.
“You can have these IP rights, but unless you’re actively enforcing them, you lack that stick and people will continue to infringe,” Rennie said. “That’s why we actively pursue all infringement and make noise around these cases to send a message to the industry that we are actively protecting our rights and the consequences for violating these rights can be very significant.”
Legal reality behind enforcement
Sometimes courts have to get involved once a situation is identified, said Stimson, who added that an international treaty — which countries can interpret differently — governs PVR law.
“Litigation is expensive and time-consuming,” he said. “We must hire attorneys in each country to prosecute these cases, which often involve several levels of appeal and can often take as long as a decade to resolve.”
Rennie points to the involvement of technology in rapid DNA analysis and that courts worldwide are becoming increasingly familiar with handling plant breeder rights and administering these cases. She said these positive developments reflect the growing number of successful enforcement cases.
Palumbo said Goldenberry’s Sugar Mangoes follow a similar route, being trademarked in the countries where they are grown and sold. The trouble with importers selling illegal products under a trademarked name is if the IP owner — in this case, Goldenberry Farms — discovers a product illegally being sold, the owner sends a cease-and-desist letter. The grocer must pull the product, as a grocer selling a mislabeled product also infringes on the trademark right.
“No grocer and no reputable merchant want to be involved with that,” he said.
Palumbo said it’s easy for Goldenberry Farms to monitor products coming into the U.S. to ensure they are from licensees.
“We understand the distribution channels because we have partners like Baldor, Melissa’s and Robinson Fresh, who are licensees and partners. We know what they’re selling.”
Sometimes, though, partners approach Goldenberry Farms because a competing grocery store sells Sugar Mangoes, and Goldenberry works with one grocery store in an area to build demand. It’s usually then that Goldenberry discovers if the competing grocer has unlicensed produce and has to intervene.
An example of this, Palumbo said, was a vendor in Canada that called Goldenberry Farms to complain about the quality of the mangoes. However, the mangoes were from an illegal exporter. Palumbo said this is a significant danger for managed varieties, as the produce may not meet the variety standards.
“[The customer] may be eating a lesser-quality piece of fruit,” he said. “The primary concern is the quality and taste of the product with the consumer, and that is the reason for the infringement. It’s because it’s everything else is secondary to the consumer experience with that thing that you told them it would be.”
More than a name or a right
Palumbo said IP goes beyond the name, growing rights and variety management. Variety management companies and fruit breeders invest significantly in launching a new variety.
“You have to create value for the supermarket,” he said.
This includes merchandising, consumer-facing websites, recipes, POS displays, social media, local advertising and more.
“When [a retailer] buys a Sweet Sugar Mango, there’s a whole merchandising guide that the supermarkets have access to,” he said. “We know that the supermarket has tens of thousands of products, so they’re not going to have time to market every single product individually. That’s our job. When someone does business with us with our brands, we generally try to amplify them in the local market where they are.”
All of this, he said, builds trust for the consumer and helps drive demand.
Tanvi Shah, intellectual property manager at Bloom Fresh, said IP protections also help fuel Bloom Fresh’s breeding programs. The company says it breeds for superior taste and quality, disease resistance, adaptability, drought tolerance and higher yields to help growers maximize their returns.
“It takes a long time and a lot of money to develop and bring to market new varieties,” she said. “So, it’s important that we have a strong IP framework so that we can utilize [the royalties on the varieties] to then generate a return on investment, and that return on investment then goes back into our breeding program so that we can continue to develop improved varieties.”
Shah added that Bloom Fresh also uses its IP to help licensed growers maximize the planted proprietary varieties.
“We have test plots where we work out the best conditions for growing our varieties,” she said. “When we’re supporting our licensed growers, that includes sharing our technical expertise to help them to achieve better quality. We’re able to do that because of the royalties and because of the IP protection that exists.”
Future of IP
Stimson said fruit breeders continue to innovate with new varieties, and growers are very eager to plant these new varieties and comply with the IP regulations because of the benefits of these new proprietary varieties, including distribution networks and marketing.
“Strong IP protection is necessary for breeders to produce new varieties, enabling exporters, distributors and retailers to bring innovation to consumers,” he said. “The availability of IP protection provides breeders with the resources to continue developing these superior varieties.”
Palumbo said he sees no signs of branded varieties slowing down.
“That’s definitely the trend,” he said. “Data and consumer trends show it. There’s all kinds of new hybrids coming out. A lot of the companies believe the best way to merchandise is with a unique trademark name.”
Shah said IP is critical for the future of variety development in a changing world.
“Continuing innovation is particularly important in the fresh produce industry, which is beset by environmental challenges; it is vital that breeders innovate to develop more resilient varieties that can be grown more sustainably, and IP protection provides the incentive and funding stream to enable that,” she said.
Palumbo said that the most significant driver to managed and proprietary varieties is to keep delivering high-quality, consistent fruit. The companies investing in trademarking fruit varieties understand quality, shelf life and consistency, which help create return customers.
“Those are the three things that are the key ingredients to make sure that if you do this flush of marketing and you attract the customer, they will come back again and again,” he said. “Because you can have the best marketing in the world, and you can attract many first-time customers, but if you don’t have a great piece of fruit to match the experience, you’ve really just not created a very long-term business for that item.”
