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?

Intellectual Property (2nd edition)

Japan Small Flag Japan

Patents: The grounds for invalidation and opposition 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 (for invalidation only)

Registered Trademarks: The grounds for invalidation and opposition include:

  • Trademark has no distinctive character
  • Trademark is likely to negatively affect public policy
  • Trademark is identical or similar to a registered or well-known mark
  • Trademark is likely to cause confusion in connection with the goods or services pertaining to the business of another person

Regarding the forum and the procedure, see 27.

UAE Small Flag UAE

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.

Mexico Small Flag Mexico

Inventions

IP right

Forum

Procedure for challenging each intellectual property rights

Grounds of invalidation

Patents

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;

4) Decision.

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.

Utility models

Industrial designs

Integrated circuits

Lack of novelty.

Brands

IP right

FORUM

Procedure for challenging each intellectual property rights

Grounds of invalidation

Trademarks

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;

4) Decision.

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.

N/A

Trade names

Slogans

 

Appellations of Origin

I. Being granted against the provisions of the Industrial Property Law; and

II. False data declared in the application.

Geographical Indications

Copyright and other rights

IP right

FORUM

Procedure for challenging each intellectual property rights

Grounds of invalidation

Copyright

Mexican Copyright Office

or

Civil court

1) Initial pleading. Evidence shall be submitted as well;

2) Response by the defendant along with his evidence;

3) Closing arguments;

4) Decision.

I. False authorship;

II. Earlier creation;

III. Granted against the provisions of the law.

Related rights

Reservation of rights

I. Earlier registration;

II. False data declared in the application;

III. Granted against the provisions of the law.

Plant varieties

Ministry of Agriculture

I. Lack of novelty;

II. Lack of distinctiveness;

III. Lack of stability;

IV. Lack of homogeneity.

India Small Flag India

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 from the date of the issuance of the Registration Certificate, during which there has been no bona fide use thereof in relation to those goods/ services by the proprietor.
  • 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/ services 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 above-mentioned goods/ services upto a date three months prior to the date of the Application.

Designs: Applications can be made to the Controller before the Indian Patent Office. An appeal shall lie from any order of the Controller to the High Court.

Updated: June 15, 2018