Who can challenge each of the intellectual property rights described in questions 1-3?
Any person may challenge the intellectual property rights described above.
The validity of registered IPR can be challenged:
- by way of action by the public prosecutor who may act ex officio as well as any third party with a legitimate interest, especially, the owner of a prior rights or the operator willing to conduct its activity without any threat of infringement
- in case of infringement proceedings, by way of defence by the alleged infringer.
R: Usually, only the owners of previous rights may challenge the new owners/applicants. Some rights may also be challenged by any interested party (including the state), even if they are not owners of previous rights.
Patents: Any person interested can challenge a patented invention by filing a post grant opposition. Any person interested or the Central Government or the alleged infringer (defendant) in an infringement suit can also file a revocation petition to challenge the validity of a patent. A patent application can be opposed by any person before its grant.
Designs: Any person interested may file a petition for cancellation for the registered design before the Indian Patent Office.
Copyright: There is no provision to challenge the registration of copyright before the grant. A person can however file an infringement suit or action for passing off in case there is a violation of his copyright by the registration or use of any such copyright.
Trade mark: Any person can oppose a trademark application. Further, any aggrieved person may make an application in the prescribed manner to the Intellectual Property Board (IPAB) or to the Registrar to cancel or vary the registration of a trade mark on the specific ground.
Geographical indications: Any person may, on application made to the Registrar in such manner and on payment of such fee as may be prescribed, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration of the GI. Any aggrieved person may make an application to the Appellate Board praying for cancelling or varying the registration of a Geographical Indication or authorised user on specified grounds.
Any person establishing legitimate interest may challenge the IP rights described in Section A. Most commonly, such person will be a competitor.
Any party can file with the JPO an opposition to a granted patent within 6 months after issuance of the official gazette in which the patent is published. Only interested parties can file for an invalidation trial at the JPO at any time.
Any party can file with the JPO an opposition to a patent registration within 2 months after issuance of the official gazette in which the trade mark is published. Only interested parties can file for an invalidation trial at the JPO at any time.
Utility model rights and Design Rights
Any party can file for an invalidation trial at the JPO at any time.
Any third party that proves its legal standing to challenge the intellectual property right. The legal standing can be proven –among other scenarios- by means of any prior intellectual property right considered affected because of the existence of the right to be challenged.
Any individual, corporation or organisation can challenge these rights, but an interest is required in order to challenge trademarks.
A challenge against an IP right may be brought by anyone, however, challenges are typically brought by: (i) an entity seeking to clear the way of the IP right before bringing its own goods or services to a market, (ii) an entity already selling potentially infringing goods or services, which is concerned about infringement, and (iii) an entity accused of infringing the right in question.
Patents and Designs
Any person may apply for revocation of a patent or design registration.
Plant Breeders’ Rights
Any person may object to the grant of a PBR.
Any “interested person” may challenge a trade mark registration and this has been held by the courts to mean any person with a genuine and legitimate competitive interest in the trade to which the trade mark relates.
Who can challenge?
any person who has an interest
any concerned person
a concerned person
It is therefore necessary for any party looking to challenge one of these rights, to ensure that they can prove that they are an "interested person" or a "concerned person" as without such proof, the challenge will fail.