Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Registered designs – Any interested person may apply to the registrar of designs or to the High Court for the revocation of a registered design.
For the registration of a design to be revoked, it must be shown that the design, at the time it was registered, was not new or was not registrable; or was a corresponding design in relation to an artistic work in which copyright subsisted, and the right in the registered design has expired.
Patents – The validity of a patent may be put in issue by way of defence, in proceedings for infringement of the patent, or in proceedings that are specifically listed under section 82 of the Patents Act.
For a patent to be found invalid, it must be shown that there is a lack of novelty, an inventive step, or industrial application. A patent may also be invalidated on the ground of insufficiency.
Any person may apply to the registrar of patents to revoke a patent on the grounds that the invention was not a patentable invention; that the patent was granted to a person who was not entitled to be granted that patent; that the specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art; that the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent; that an amendment or correction has been made to the patent or the application of the patent that should not have been allowed; that the patent was obtained fraudulently, on misrepresentation, or on any non-disclosure or inaccurate disclosure of any prescribed material information; or that the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or his successor in title.
Plant varieties – Any person may apply to the registrar of plant varieties or to the High Court to challenge the validity of the grant of plant varieties protection on the grounds that the plant was not novel and distinct at the time of the grant; was not uniform or stable at the time of the grant; or the protection has been granted to a party who is not entitled to the grant.
Any person may also apply to the High Court to challenge the validity of a registered denomination on the ground that it did not meet the required registration criteria.
Trade marks – Any person may apply to the registrar of trade marks or to the High Court for a declaration of invalidity of the registration of a trade mark.
For a trade mark to be found invalid, it must be shown that its registration was obtained through fraud or misrepresentation, or that it conflicts with earlier rights. A trade mark may also be revoked for non-use.
The existence of copyright or the validity of a French design, patent or trademark can be challenged either by an independent action or through a counterclaim before the competent jurisdiction (see question 19).
As regards copyright, the claimant will have to demonstrate that the work lacks originality usually by establishing that the work’s main features are common in the concerned field by producing documents showing prior similar works.
Regarding design, the claimant will have to prove that the design at stake is not novel, lacks individual character, infringes public policy or moral principles or that its appearance is dictated by the technical function performed or to allow its mechanical association.
Pursuant to IPC article L.613-25, a patent can be declared invalid on the ground that:
- the invention:
- is excluded from patentable subject matter (see IPC article L.611-11 and L.611-16);
- is not novel;
- does not involve an inventive step;
- is not capable of industrial application;
- the patent does not disclose the invention in a manner sufficiently clear and complete;
- the subject-matter of the patent extends beyond the content of the application.
A trademark can be invalidated on the grounds that the registered sign in relation with the products and or services designated:
- is not capable of graphical representation (please note however that the EU directive and regulation have abandoned this requirement) or lacks distinctive character;
- is excluded by the Paris Convention, contrary to public policy or moral principles or deceptive;
- infringes prior rights listed in IPC article L.711-4.
R: During the registration process, oppositions (to almost all the registered rights applications) may be filed in the IP Institute. The opposition procedure is quite simple: after the publication in the IP Bulletin, a deadline is given to third parties to file oppositions, after that period, the institute studies the application. In what regards to some rights, the institute may issue a provisional decision, giving the applicant the chance to answer to said provisional decision or, in some cases, to modify any element. Then, the institute issues a final decision. Said final decision is published in the IP Bulletin and any interested party has a deadline to appeal. The most commonly invoked grounds are related with the imitation of a previous right. Also, the practice of unfair competition acts is often invoked, either as an enforcement of the imitation or in an autonomous way. There are also other less frequent grounds, such as the loss of distinctiveness of a sign or the illegal use/abusive use of an IP right.
Patents: For oppositions, both pre grant and also post grant, the Indian Patent Office has jurisdiction. For a revocation petition, before the district court or the High Court in case of counterclaim in an infringement suit.
Trade marks: An Opposition can be filed in front of the Trademarks Registry on the grounds that the trademark applied for is:
- Devoid of distinctive character
- Descriptive in nature
- Are customary in the current language and or in the established practices of trade
- Likely to deceive public or cause confusion
- Contains matters that are likely to hurt religious feelings of any class or section of the citizens of India
- Prohibited under the Emblem and names (Prevention of Improper Use) Act, 1950
- Exclusively of the shape of the goods
- Identical with/similar to an earlier trademark
- Malafide/bad faith
- Prevented by virtue of the law of passing off
- Contrary to any law for the time being in force
- Prevented by way of Copyright Act, 1957
A Cancellation/Rectification action can be filed in front of the Trademarks Registry and/or the Intellectual Property Appellate Board for similar grounds as mentioned above as well as on the grounds that:
- Up to a date three months before the application for rectification, a continuous period of more than five years has already elapsed during which the trade mark was entered into the Register and during which there has been no bona fide use thereof in relation to those goods by the proprietor for the time being.
- Registration of the trade mark has been obtained by the Registered Proprietor with no bona fide intention of using it as a trade mark in relation to goods in respect of which the impugned mark is registered and that there has been no bona fide use of the trade mark in relation to the abovementioned goods upto a date three months prior to the date of the Application.
A Civil Suit can be filed in any court in India of appropriate jurisdiction on the grounds:
Designs: Applications can be made before the Indian Patent Office.
- Patents, utility models, designs, and registered designs can be challenged before the civil courts via a nullity action or as a defense in infringement proceedings.
Patent nullity grounds: (i) the invention does not meet the requirements of being new, susceptible to industrial application, and/or involving an inventive step, (ii) the disclosure contained in the patent is insufficient for the patent to be carried out by the person skilled in the art, (iii) the subject matter of the patent is excluded from patentability, or it goes beyond the content of protection as requested in the application, and (iv) the patentee is not the true inventor or inventor's successor.
Utility model nullity grounds: (i) the utility model is not new or industrially or a three-dimensional object with definite shape and form, and/or capable of giving a solution to a technical problem, and (ii) the right holder is not the true inventor or inventor's successor.
Semiconductor topographies nullity grounds: the right does not meet the requirements of not being common in the semiconductors industry.
Registered design nullity grounds: (i) the design or model is not new or of individual character, (ii) the form of the product or its interconnection with other products is not appropriate for protection because they are dictated solely by a technical function or because they are linking elements, (iii) exploitation or publication is contrary to public order or established morals and (iv) the holder of the registered design is not the true author or author's successor.
- Trade marks: The forum for challenging trade marks is the Greek TM Office and, on further appeal, the administrative courts. The rights may be attacked either during the registration procedure (opposition) or post-registration (cancellation action).
The main grounds for seeking invalidity of registered TMs are (i) lack of any distinctive character, (ii) descriptiveness, (iii) deceptiveness as to the nature, quality or geographical origin of the goods or service (iv) the mark in question has become customary in the current language or in the bona fide and established trade practices, (v) violation of established morals and public interest, (vi) identity or confusing similarity with earlier TMs, copyright or unregistered designs and sings, (vii) detriment to or free-riding on the repute or distinctiveness of an earlier famous TM, and (viii) non-use for a consecutive period of 5 years.
- Unregistered designs and marks may be challenged before the civil courts, usually as a defense in infringement proceedings. The grounds of invalidity of such rights are mainly (i) lack of any distinctive character, (ii) descriptiveness, (iii) deceptiveness as to the nature, quality or geographical origin of the goods or service, and (iv) non-use in the market.
The grounds for invalidation include:
- Lack of novelty or inventive step
- Interference with another patent application that has an earlier priority date
- Violation of claim clarity, enablement or written description requirements
- Violation of conditions for an amendment during prosecution
- Falsification of inventorship
The grounds for opposition include all of the grounds listed above, except falsification of inventorship.
Regarding the forum and the procedure, see 27.
The grounds for invalidation and opposition include:
- a trademark has no distinctive character;
- a trademark is identical or similar to the mark of a national or international organisation;
- a trademark is identical or similar to a registered or well-known mark; or
- a trademark is likely to cause confusion in connection with the goods or services pertaining to the business of another person.
Procedure for challenging each intellectual property rights
Grounds of invalidation
Mexican Patent and Trademark Office
1) Initial pleading. Evidence shall be submitted as well;
2) Response by the defendant along with his evidence;
3) Closing arguments;
I. Lack of novelty;
II. Lack of inventive step;
III. Lack of industrial application.
IV. When the patent was granted to the wrong person.
V. Abandonment of the patent application.
Lack of novelty.
Procedure for challenging each intellectual property rights
Grounds of invalidation
Mexican Patent and Trademark Office
1) Initial pleading. Evidence shall be submitted as well;
2) Response by the defendant along with his evidence;
3) Closing arguments;
I. Being granted against the provisions of the law;
II. Earlier use in Mexico or abroad;
III. False data stated in the application;
IV. Earlier registration; and
V. Bath faith.
Appellations of Origin
I. Being granted against the provisions of the Industrial Property Law; and
II. False data contained in the application.
Copyright and other rights
Procedure for challenging each intellectual property rights
Grounds of invalidation
Mexican Copyright Office
1) Initial pleading. Evidence shall be submitted as well;
2) Response by the defendant along with his evidence;
3) Closing arguments;
I. False authorship;
II. Earlier creation;
III. Granted against the provisions of the law.
Reservation of rights
I. Earlier registration;
II. False data declared in the application;
III. Granted against the provisions of the law.
Ministry of Agriculture
I. Lack of novelty;
II. Lack of distinctiveness;
III. Lack of stability;
IV. Lack of homogeneity.
Invalidation requests relating to patents must be filed to the re-examination board of SIPO.
The grounds for invalidation are as follows:
Invention and utility models patents: lacking novelty and/or inventiveness over the prior art, and/or non-compliance with formality requirements, e.g. insufficient disclosure and clarity.
Design patents: being the same or substantially similar as a single reference or bearing no obvious differences to a single reference or multiple references in combination (i.e. the prior design corpus).
Trademarks: prior rights, prior use, cross-class protection for well-known marks, improper registration, and/or bad faith applications. Trademark invalidation requests should be filed at TRAB.
Forum and outline of process
Third party observations ("TPOs") are a low cost process for objecting to the grant of a patent or trade mark (subject to time limits) before the right is granted. TPOs can be made to the UKIPO, EUIPO or EPO, or WIPO. The third party need not identify itself; it is common for a party to instruct a patent attorney to file observations on its behalf. The intellectual property office will consider the TPO, but is not obliged to accept the observations made. While TPOs are used, they tend to be less popular than opposition or revocation proceedings because, once they have been filed, the third party has no further involvement in the process.
Oppositions are inter partes procedures available in relation to trade marks and European Patents. Oppositions allow the third parties to file detailed opposition submissions and evidence and to attend and participate in oral hearings. As with TPOs, a party is not required to identify itself and may bring opposition proceedings in the name of a patent attorney. Oppositions can take years to be resolved. However, they are usually considerably less expensive than UK litigation. For trade marks, oppositions occur prior to the grant of the trade mark (they must be filed within several months of publication of the application), while for European Patents oppositions occur post-grant (they must usually be filed within 9 months of the patent being granted). There is no opposition procedure for national patents or design rights.
After an IP right has been granted, a third party can seek to challenge and revoke that IP right at any time through the civil courts (see questions 18 and 19) or the UKIPO or EUIPO (for Community Designs and EU Trade Marks).
Basis of invalidity finding
The basis of an attack on validity is typically that the requirements for registration (see question 1) were not met. In the case of trade mark registrations, a third party may also seek revocation on the basis that the trade mark owner has not used the trade mark for a period of 5 years.
The validity of a patent may be attacked by showing that:
- The invention claimed was not novel or was obvious (did not involve an inventive step) at the priority date of the patent. To demonstrate this, the third party will rely on disclosures (through documents, demonstrations, use, etc.) made before the priority date, whether or not these were considered during the examination of the patent, and expert evidence. To establish lack of novelty, the "prior art" must either disclose each aspect of the invention clearly and completely enough for it to be performed or the invention must be the inevitable result of following the teaching of the prior art. To establish lack of inventive step, any differences between the prior art and the invention must have been obvious to a person skilled in the art. A novelty attack can also be based on a "co-pending" patent application which, by the priority date, had been filed at the same patent office but not yet been published.
- The patent is not capable of industrial application: i.e. cannot "made or used in any kind of industry, including agriculture".
- The patent relates to excluded matter (for instance, it is a computer program or discovery).
- The patent is "insufficient" as it does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. This attack usually requires expert evidence and may include other forms, such as, experimental evidence demonstrating that the information in the patent cannot be used to produce the invention. Other forms of insufficiency have emerged over time, including that the claimed invention lacks 'plausibility', and that the claim is excessively broad having regard to the patentee's technical contribution to the art.
- Matter has been added to the specification that goes beyond the matter disclosed in the original application.
- The claims have been amended post-grant, extending the scope of protection conferred by the patent.
- The patent was granted to the wrong individual (this challenge must be made within 2 years of grant).
The validity of a trade mark may be attacked in whole or in part (in relation to certain goods and services) and on either "absolute grounds" (on the basis that the trade mark itself is not the type of trade mark that is capable of registration), on "relative grounds" (that the trade mark is identical or similar to an existing mark, in respect of the same or similar goods and services) or for non-use for a period of 5 years.
- The absolute grounds include that a mark: (i) does not distinguish the goods or services of one undertaking from those of other, (ii) is devoid of distinctive character, (iii) designates the kind, quality, intended purpose, value, or geographical origin of goods or services, or other characteristics of goods or services, (iv) has become customary in the current language or established practice of the trade; (v) assumes the shape of the goods, either as a result of the nature of the goods or which is necessary to obtain a technical result, (vi) gives substantial value to the goods; (vii) are contrary to public policy or morality, (viii) deceive the public as to the nature, quality or geographical origin of the goods or service, (ix) are prohibited in the UK, or (x) are protected emblems.
In relation to (ii), (iii) and (iv), the mark will not be declared invalid if, after registration, it has acquired distinctive character in relation to the goods or services for which it is registered.
- An attack may be based on relative grounds, that the registered mark is identical or similar to an earlier mark and used in relation to identical or similar goods or services. For non-identical trade marks, there must also be shown to be a likelihood of association of the later mark with the earlier mark.
- An attack may also be raised on the relative grounds that the trade mark is identical or similar to an earlier mark which has a reputation in the UK and the use of the later mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
- Trade mark applications can also be revoked for non-use for a continuous period of 5 years.
A design registration may be invalidated and cancelled if:
- the design is not novel or lacks individual character (i.e. it does not produce a different overall impression to that of an earlier registered design right on the informed user); or
- the design results from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation, or must have the registered shape solely in order to perform a technical function or to interconnect with another part.
Patents and Designs
Like patent infringement actions, patent revocation proceedings are instituted in the Court of the Commissioner of Patents. The defences listed above that may be raised in patent infringement proceedings may be relied on in revocation proceedings. The same principles apply to registered designs except that revocation applications are instituted in the High Court.
Plant Breeders’ Rights
An objection must be in writing, is made to the Registrar of Plant Breeders’ Rights and requires payment of a prescribed fee. The Registrar may appoint one or more persons who have experience in the administration of justice or skill in the matter under consideration, to assist and advice the Registrar at the hearing. Summons may be issued and witnesses may be called. Legal representation is allowed. The Act does not specify the grounds for objection, but presumably the grounds would include that the variety did not comply with any of the requirements for the grant of a PBR as set out in section 20 of the Act.
Opposition proceedings are filed with the Tribunal of the Registrar of Trade Marks. Cancellation proceeding may be filed before the Tribunal of the Registrar of Trade Marks or the High Court. The grounds of opposition and cancellation proceedings are set out below.
The following marks shall not be registered as trade marks or, if registered, shall be liable to be removed from the register:
- mark which does not constitute a trade mark;
- a mark which—
(a) is not capable of distinguishing; or
(b) consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering of the services; or
(c) consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade;
- a mark in relation to which the applicant for registration has no bona fide claim to proprietorship;
- a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark, either himself or through any person permitted or to be permitted by him to use the mark;
- a mark which consists exclusively of the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods themselves;
- a mark which, on the date of application for registration thereof, or, where appropriate, of the priority claimed in respect of the application for registration thereof, constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark and which is used for goods or services identical or similar to the goods or services in respect of which the trade mark is well-known and where such use is likely to cause deception or confusion;
- a mark the application for registration of which was made mala fide;
- (a) mark which consists of or contains the national flag of the Republic or a convention country, or an imitation from a heraldic point of view, without the authorization of the competent authority of the Republic or convention country, as the case may be, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorization;
(b) a mark which consists of or contains the armorial bearings or any other state emblem of the Republic or a convention country, or an imitation from a heraldic point of view, without the authorization of the competent authority of the Republic or convention country, as the case may be;
(c) a mark which consists of or contains an official sign or hallmark adopted by the Republic or a convention country, or an imitation from a heraldic point of view, and which indicates control and warranty, in relation to goods or services of the same or a similar kind as those in relation to which it indicates control and warranty, without the authorization of the competent authority of the Republic or convention country, as the case may be;
(d) a mark which consists of or contains the flag, the armorial bearings or any other emblem, or an imitation from a heraldic point of view, or the name, or the abbreviation of the name, of any international organization of which one or more convention countries are members, without the authorization of the organization concerned, unless it appears to the registrar that use of the flag, armorial bearings, other emblem or imitation or the name or abbreviation in the manner proposed, is not such as to suggest to the public that a connection exists between the organization and the mark, or is not likely to mislead the public as to the existence of a connection between the organization and the proprietor of the mark.
- a mark which contains any word, letter or device indicating State patronage;
- a mark which contains any mark specified in the regulations as being for the purposes of this section a prohibited mark;
- a mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the registration of such mark is or has become likely to limit the development of any art or industry;
- a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons;
- a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion;
- a mark which is identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark;
- a mark which is identical to a mark which is the subject of an earlier application by a different person, or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which the mark in respect of which the earlier application is made, would be likely to deceive or cause confusion, unless the person making the earlier application consents to the registration of such mark;
- a mark which is the subject of an earlier application as contemplated in paragraph
- if the registration of that mark is contrary to existing rights of the person making the later application for registration as contemplated in that paragraph;
- a mark which is identical or similar to a trade mark which is already registered and which is well-known in the Republic, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion, unless the proprietor of such trade mark consents to the registration of such mark.
UAE national patents, utility certificates and designs: oppositions are filed with the Grievance Committee within the Patent Department of the Ministry of Economy, a tribunal function. The decision can be appealed through the Courts where it is a litigation matter.
For cancellation actions, these can be filed with the UAE courts by an interested person and can request full or partial cancellation. The cancellation can be filed on the basis that the patent / design / utility model was granted without satisfying the conditions stated for them in the law or its implementing regulations and/or that the right was granted without taking into account the priority of applications filed with a priority date earlier than the granted right.
UAE trade marks: oppositions are filed with the Opposition division of the trade marks department, a tribunal function. Its decisions can be appealed to the Trade Marks Committee (again, a tribunal function), which can in turn be appealed on to the UAE Courts. Oppositions can be based on the provisions of the law which outline what may not be registered as a trade mark, as well as other provisions of the law.
Invalidation actions can be filed through the court, or through the Trade Marks Department, depending on the type of invalidity action. As of May 2017, the Trade Marks Department will accept and consider invalidation actions where it is alleged the registration was filed without a right. This is a limited action aimed at dealing with hijacking of a trade mark by a business partner or similar. Other invalidation actions, such as non-use, or registrations which offend other provisions of the law, are to be filed with the Courts.
GCC patent: the law is silent on invalidation actions, though Article 26 provides for authorities in the Member States to examine disputes relating to infringement or imminent infringement of a patent. It is generally considered that a request for cancellation action may be filed with the national courts appointed for handling GCC patent matters, the relevant country being where the infringement or imminent infringement is likely to occur. Invalidation claims can be raised through new court proceedings, or as a counter-claim for infringement, based on the patent offending the following provisions of the law regarding patent requirements:
- It was filed by someone other than the inventor or the inventor's successor in title
- It is not new
- It does not involve an inventive step
- It is not obvious to a person having ordinary skill in the art
- It is not industrially applicable
- It conflicts with Sharia law
- It conflicts with public rules of conduct
- It was publically disclosed
- To safeguard public order and proper conduct, protection of human, animal and plantation life and health, or to avoid serious damage to the environment
- It is not regarded as an invention (discoveries, scientific theories, mathematical methods, computer programs, schemes rules and methods for doing business, purely mental acts, playing games, varieties of plants, species of animals, biological processes to produce plants or animal, methods of surgical or therapeutic treatment, methods of diagnoses)
UAE copyright: The court may, based on an application by a concerned person, order the cancellation of a copyright recordal in the register on the basis that the works did not meet with the requirements for protection as a copyright works in the UAE.
The Verified Notice of Opposition against trademark applications as well as Petitions for Cancellations of trademark registrations or Letters Patent are filed before the IPO Bureau of Legal Affairs (“BLA”). The following are the steps/procedure in trademark Oppositions and Cancellation proceedings:
- Filing of the Verified Notice of Opposition/Petition or Cancellation
- Issuance by the BLA of the Notice to Answer
- Filing of a Verified Answer by the Respondent
- The Verified Answer must be filed within thirty (30) days from receipt of a copy of the Notice to Answer. The filing thereof may be extended for a total of ninety (90) days with thirty (30) days each per extension by filing motions for extension of time.
- Referral to Mediation – Upon referral to mediation, the adjudication proceedings therefore shall be suspended until the case is returned by the IPO Mediation Office for resumption of proceedings.
In case of successful mediation:
a. Mediator shall refer the parties’ compromise agreement to the head of the originating office; and
b. Approval of the compromise agreement by the head of the originating office.
In case of non-settlement of dispute:
a. Declaration by the IPO Mediation Office that mediation is unsuccessful; and
b. Termination of the mediation proceedings by issuing a Notice of Non-Settlement of Dispute;
- Preliminary Conference
- Submission of Position Papers
- Submission for Decision
Grounds for Invalidity
In the case of patents, the same may be cancelled if (a) the claimed invention is not new or patentable, (b) the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art, or (c) the patent is contrary to public order or morality.
For trademarks, the opposition or cancellation may be founded on any of the grounds that would prohibit registration enumerated in Section 123.1 of the IP Code, which pertinently includes the likelihood of deception of the public as to the nature, quality, characteristics, or geographical origin of the goods or services, or identity or confusing similarity.
Patent validity can be challenged in a federal court where venue is proper as well as the PTAB. A person or corporation wanting to challenge validity can file a complaint seeking declaratory judgment against the patent owner. However, the person/corporation does not have a right to file a declaratory judgement––there must be an imminent threat of litigation. Validity may also be challenged using a request for inter partes review with the PTAB. Trademark validity can also be challenged in federal court by filing a complaint or in the TTAB with a petition for inter partes review of the registration.
Intellectual property rights can either be challenged before the respective office and/or (if these proceedings fail) before the regular courts. Grounds for invalidity include that the subject matter is not eligible for protection from the outset, that the owner does no longer exist, that trade mark have not been used in the course of trade, that rights have been registered in bad faith.
The forum for challenging patents, trademarks, plant variety rights and non-agricultural POA/PGI in administrative proceedings is the Intellectual Property Institute in Berne. The forum for challenging agricultural POA/PGI in administrative proceedings is the Federal Office of Agriculture in Berne. The forum for civil-law disputes concerning patents is at the Federal Patent Court in St. Gallen. In all other civil-law disputes the question of which cantonal court has jurisdiction depends on whether the case at hand is a Swiss domestic dispute or an international dispute. Further it depends on the action concerned (preliminary injunction, infringement action, declaratory action, etc.). In Swiss domestic infringement cases, the claimant potentially can file claims in the following venues: at its own domicile or registered office, at the domicile or registered office of the defendant and at the forum where the infringing act occurred or had its effect. In an international dispute resulting in an infringement action, the claimant can file its claim either at the domicile or registered office of the defendant, the place where the act occurred or the place where it had its effect.
The forum for UDRP disputes is at WIPO in Geneva.
Any intellectual property object can be challenged after its registration at the courts.
Inventions: a patent (utility model) may be invalidated if it does not meet patentability conditions (industrial applicability, novelty and inventive step for inventions; industrial applicability, and novelty for utility models); if an application is filed with infringement of rights of third parties; in case of presence in claims of features that were absent in filed application; in case of filing an application abroad by Ukrainian applicant before filing it to UA PTO and obtaining a consent.
Trademarks: a trademark certificate may be invalidated on absolute and relative grounds (if it does not meet protectability requirements); in case of presence of mark elements or goods/services that were absent in filed application; if an application is filed with infringement of rights of third parties;
Industrial designs: a design may be invalidated if it does not meet the novelty requirement; in case of presence of a set of essential features that were absent in filed application; if an application is filed with infringement of rights of third parties;
Semiconductor topographies: a topography may be invalidated if it is not original; if an application is filed with infringement of rights of third parties; in case of filing an application abroad by Ukrainian applicant before filing it within UA PTO informing about intention regarding filing abroad.
Geographical indications and designations of origin can be challenged on the following grounds: it is false or misleading; the fulfillment of all registrability requirements is not duly proved (or does not correspond to the actual facts); is a name of a plant or breed variety and therefore can be misleading for the consumers; it is identical or confusingly similar to trademark protected in Ukraine.
Plant varieties: may be invalidated in case of absence at the filing date of variety distinctiveness, lack of novelty, lack of homogeneity or stability; grant of intellectual property rights to the person not entitled to such ownership, based on the laws (unless the rights are being further assigned to the appropriate person);
Copyright: intellectual property rights to a copyrighted work can be challenged on the ground of infringement of rights of the third parties in creation, registration, exploitation of copyrighted work.
Any objections regarding the registration of intellectual property right shall be filed to the Authority.
In case of objections to be made in relation to the registration of trademark rights, the Authority asks the applicant to submit its opinions about the objections in due time. The Authority may also demand the parties to submit additional information and documentation if it deems necessary. If any objection is filed for a trademark application on grounds that there is already a trademark right that has been registered for the same commodities and services, upon the request of the applicant, the party filing that objection shall be asked to provide evidence proving that the registered trademark constituting basis for the objection has been substantially used in Turkey for the last five years before the date of the application or priority rights, or if not used, there have been justifiable reasons for non-use of the trademark provided that the trademark constituting the basis for the objection should be registered for minimum five years in Turkey as of the relevant application or priority date. If a review into the objection reveals that the trademark should not be registered for all or part of the commodities and/or services constituting the basis for application, the registration application shall be rejected for only those commodities and/or services. The Authority may also invite the parties to make a settlement. Those affected negatively from the decisions rendered by the Authority on account of the objections may file a written objection along with the justifiable reasons to the Authority within two (2) months as from the notification of the decision after depositing the relevant fee specified for such an objection and submitting the documentary proof of payment to the Authority. The Board shall ask the parties to submit their opinions on the objection in due time in addition to asking for additional information and documentation if necessary. The decision to be rendered by the Authority upon the review of the objections shall be the final decision of the Authority in that regard and it shall be necessary to file a litigation before the civil court of intellectual and industrial rights in order to ask for cancellation of the decision to reject the objection or application. Article 5 of IPL lists the absolute grounds for refusal of trademark registration conclusively while article 6 provides for the relative grounds for refusal. Trademark registration applications including the indications that do not constitute trademark, indications that do not have any distinctive quality or indications that are used commonly by everyone in trade are regarded as absolute grounds for refusal under article 5 according to which the Authority shall conduct a review on ex officio basis. Besides, if the registration is made despite the existence of those conditions resulting in any objection by third parties claiming that the registration should not be made, a review can be conducted, as well. Article 6 of IPL lists the relative grounds for refusal. In that respect, if a trademark intended to be registered is the same as or similar to another trademark that is already registered or subject to an on-going application and if the commodities and services to be marketed under those trademarks are same or similar giving rise to the probability that the trademark intended to be registered could be confused with the trademark that is already registered or subject to an on-going application by the public opinion, this shall constitute a relative reason for rejection and any such application shall be rejected upon application by the relevant parties.
Third persons or the owner of any previous right may file an objection against the registration of geographical indications and traditional product names on grounds that the relevant application does not fulfil the requirements for application by depositing the relevant objection fee in due time and submitting the documentary proof for payment to the Authority. After that, the Authority shall ask the applicant to submit its opinions about the objection. The Authority may also consult relevant institutions or organizations if it deems necessary. If any such institution or organization demands a fee to provide an opinion, such fee shall be paid by the Authority. The Authority may invite the parties to make a settlement if it deems necessary. If the application is modified in terms of form or content as a result of the review of the objection, the final version of the application shall be announced in the Bulletin by underlining the modification and the parties shall not be entitled to object to this announcement. If the Authority decides to reject the application, this decision shall be announced in the Bulletin.
The objection procedure for design application consists of objection to the registration following the completion of the registration, requesting the applicant to provide its opinions in due time, acceptance of the objection partially or wholly leading to the rejection of the registration partially or wholly and application of the provisions regarding nullity of the design on account of such rejection. The decision for nullity shall be announced in the Bulletin.
Third parties may file an objection against any patent on grounds that (i) the subject matter of the patent is not suitable for patenting, (ii) the invention is not explained satisfactorily, or (iii) the subject matter of the patent does not remain limited to the initial version of the application within six (6) months as from the announcement of patent decision in the Bulletin by paying the relevant fee and submitting the documentary proof for payment to the Authority. The patent holder may submit its opinions about the objection or amend its application within three (3) months as from becoming informed of the objection. The objection shall be reviewed by the Authority with due regard for the opinions of the applicant or amendments to the patent application. As a result of the review, the Authority shall decide for the validity of the patent or the amended version or else nullity thereof. In case of nullity decision, the patent shall become null and void and the relevant decision shall be announced in the Bulletin. If the Authority decides that the patent or amended version of the patent shall remain valid partially, the Authority shall ask the patent holder to make the necessary amendments within two (2) months as from the notification of the decision. In the event that the requested amendments are not made in due time or the amendments that are proposed are not acceptable, the Authority shall decide for the nullity of the patent based on the conditions provided above.
PATENTS & UTILITY MODELS:
Patent invalidation may be declared by the SPTO in the course of opposition proceedings. A decision of the Spanish Patent and Trademark Office on patent validity can be appealed to the contentious-administrative courts.
Invalidation proceedings can be also brought before the Civil courts, but it is forbidden invoking the same legal grounds already alleged before the Spanish Patent and Trademark Office.
Patent invalidation may be also requested through specific proceedings or during the course of a patent infringement case (as a counterclaim). In this latter case, both the patent infringement and the patent invalidation action will be dealt by the same Court and will be resolved in the same judgment.
A patent in Spain may be invalidated totally or partially depending on whether the causes for invalidation affect all or only certain claims of the patent. A patent registered in Spain can be declared invalid if it can be established that:
- Conditions of patentability are not met (novelty, inventive step and industrial application);
- Its subject-matter falls within the patentability exception;
- Lack of clear and complete description;
- The subject matter of the patent goes beyond the content of the application as filed; or
- The owner of the patent had no right to obtain the patent.
The patentee will be allowed to revoke or limit the scope of his/her patent by modifying its claims at any time during the patent lifespan (which also covers the validity period of the supplementary protection certificate).
In patent cancellation proceedings where the parties have submitted contradictory expertises, the Judge might decide to request the SPTO the issuance of a non-binding "technical expertise" on the controversial technical issues. The author of such expertise might be called to witness at the trial (Section 120.7).
The expiration of a registered trademarks before civil courts can be requested on the following grounds:
- Lack of genuine and effective use in the Spanish market in connection with the goods or services for which it is registered. If the use is not made from the time of registration or ceases for an uninterrupted period of five years, without legitimate reason, the trademark may be cancelled;
- as a result of the owner’s activity or inactivity, the trademark has become a common name for the goods or services for which it is registered;
- the trademark becomes misleading as a consequence of its use in the market; or
- the trademark owner no longer has the capacity to own a Spanish trademark.
The invalidity of a registered trademarks before civil courts can be requested on the basis of:
- the trademark owner does not have the capacity to own a Spanish trademark.
- The trademark lacks of distinctive character.
- The trademark consists exclusively of signs or indications that may serve in trade to designate the species, quality, quantity, destination, value, geographical origin, the time of obtaining the product or the provision of the service or other characteristics of the product or service.
- The trademark consists exclusively of signs or indications that have become habitual to designate the products or services in the com
- The trademark is constituted exclusively by the form imposed by the nature of the product itself or by the form of the product necessary to obtain a technical result, or by the form that gives a substantial value to the product.
- The trademark is contrary to the Law, public order or generally accepted moral codes.
- The trademark may mislead the public, for example about the nature, quality or geographical origin of the product or service.
- The trademark applied to identify wines or spirits contain or consist of indications of geographical origin identifying wines or spirits which do not have such origin, even where the true origin of the product is indicated or the geographical indication translated or accompanied by Expressions such as "class," "type," "style," "imitation," or the like.
- The trademark reproduces or imitates the coat of arms, flag, decorations and other emblems of Spain, its Autonomous Communities, its municipalities, provinces or other local entities, unless the proper authorization is given.
- the trademark includes insignia, emblems or emblems other than those referred to in Article 6 ter of the Paris Convention and which are of public interest, unless their registration is authorized by the competent authority.
- the applicant filed the trademark application in bad faith.
mon language or in the loyal and constant customs of the commerce.
- the trademark is identical to an earlier trade mark designating identical goods or services.
- the trademark is identical or similar to an earlier trade mark and because the goods or services which they designate are identical or similar, there is a likelihood of confusion on the part of the public; The likelihood of confusion includes the risk of association with the earlier trade mark.
- the trademark is identical to an earlier trade name designating activities identical to the goods or services for which the mark is sought;
- the trademark is identical or similar to a previous trade name and because the activities which designate the goods or services for which the mark is sought, there is a likelihood of confusion on the part of the public; The likelihood of confusion includes the risk of association with the previous trade name.
- the trademark, even if its registration is for dissimilar for goods or services, is identical or similar to a previous well-known or renowned trademark in Spain and the use of the mark may indicate a connection between the products or services covered by it and the owner of the prior well-known or renowned trademarks or, in general, when such use, carried out without fair cause, may lead to an improper use or impairment of the distinctive character or of the notoriety or renown of such earlier signs.
- the trademark consists of a name or image that identifies a person other than the applicant for the mark.
- the trademark consists of a name, surname, pseudonym or any other sign that identifies a person other than the applicant for the general public.
- the trademark consists of signs reproducing, imitating or transforming creations protected by copyright or other industrial property rights.
- the trademark consists of a trade name, denomination or business name of a legal person that, prior to the filing date or priority of the mark applied for, identifies in the economic traffic a person other than the applicant, if, because it is identical or similar to these signs and because its scope of application is identical or similar, there is a likelihood of confusion on the part of the public.
- the trademark has been registered without consent by the agent or representative of a third party who is the owner of a trademark in another member of the Paris Convention or the World Trade Organization.
The expiration of a registered design before civil courts can be requested when the design´s holder is no longer entitled to own the registered design.
The invalidity of a registered design before civil courts can be requested on the basis:
- that what is requested as a design does not conform to what is defined as such by law;
- that he design does not comply with any of the legal requirements for protection;
- that it has been declared by a final judicial decision that the design holder does not have the right to obtain the design registration;
- that the registered design is incompatible with a design protected in Spain by virtue of a request or registration with a prior date of presentation or priority, but which has only been made accessible to the public after the date of presentation or priority of the later design;
- that the registered design implies an improper use of any of the elements listed in Article 6 ter of the Paris Convention or of distinctive emblems and emblems other than those referred to in Article 6 ter which are of public interest such as the emblem, flag and other emblems of Spain, its autonomous communities, Its municipalities, provinces or other local entities, unless it has the proper authorization;
- that the registered design incorporates a trademark or other distinctive sign previously protected in Spain whose owner is entitled, by virtue of such protection, to prohibit the use of the sign in the registered design;
- that the registered design implies an unauthorized use of a work protected in Spain by copyright.
Third parties might challenge a registered copyright before the civil courts. Moreover, in the course of a copyright infringement case, defendant can argue that the claimant’s work is not copyrightable (i.e. on the grounds of lack of originality).