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 (3rd edition)

Malaysia Small Flag Malaysia

The forum for challenging these intellectual property rights is in Court.

The grounds for a finding of invalidity of each of these intellectual property rights are:
Patents:

(a) The invention did not meet the patentability requirements, it is not an invention within the meaning of the Act or is a non-patentable invention or is against public order or morality or prohibited by law or fails to comply with the requirements under the Act;

(b) The description or the claim does not comply with the requirements of the Patents Regulations 1986;

(c) The drawings which are necessary for the understanding of the claimed invention have not been furnished;

(d) The right to the patent does not belong to the person to whom the patent was granted;

(e) The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.

Utility Innovation:

(a) The utility innovation is not an utility innovation within the meaning of the Act or is not eligible for a certificate for a utility innovation or is against public order or morality or prohibited by law or fails to comply with the requirements under the Act

(b) The description or the claim does not comply with the requirements of the respective regulations prescribed;

(c) that any drawings which are necessary for the understanding of the claimed innovation have not been furnished;

(d) The right to the certificate of utility innovation does not belong to the person to whom the certificate of utility innovation was granted;

(e) The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.

Confidential information:

That the information is not confidential.

Trade Marks:

Registration is invalid due to the reasons that:

(a) the original registration was obtained by fraud;

(b) the trade mark offends against s. 14 of TMA;

(c) the trade mark was not, at the commencement of the proceedings, distinctive of the goods or services of the registered proprietor.

The trade mark should be removed due to the following reasons:

(d) up to one month before applying to remove the trade mark, there was no use in good faith for a continuous period of at least three years in relation to those goods or services where trade mark had been registered

(e) the trade mark was wrongfully remaining in the Register.

Geographical Indication:

Cancellation on the ground that the geographical indication is excluded from protection such as:

(a) the geographical indication not corresponding to the meaning of ‘geographical indication’ as defined in the Act;

(b) the geographical indication is contrary to public order or morality;

(c) the geographical indication which are not or have ceased to be protected in their country or territory of origin; or

(d) the geographical indications which have fallen into disuse in their country or territory of origin.

The rectification of the registration of a geographical indication on the following grounds:

(a) That the geographical area specified in the registration does not correspond to the geographical indication;

(b) That the indication of the products for which the geographical indication is used or the indication of the quality, reputation or other characteristic of such products is missing or unsatisfactory.

Copyright:

That the work is not original or there is no copyright.

Industrial Design:

The industrial design may be revoked where it was not new at the priority date of the application for registration and where it is contrary to public order or morality. It may be cancelled where the registration has been procured by unlawful means

Norway Small Flag Norway

A protest to a patent or trademark application is brought before NIPO. The person submitting a protest does not become party to the proceedings, but NIPO shall take into account the protest when processing the application.

An opposition to a patent needs to be brought before NIPO within nine months from the grant of the patent. For trademarks the deadline is three months from the announcement of the grant. NIPO informs the rights holder of the opposition and sets a deadline for providing comments.

During the subsistence of the right, a third party wishing to remove the effects of a patent, design, a trademark or a business name may file a claim for an administrative review from NIPO or file a lawsuit. For administrative review of business names, a deadline of three years from registration applies.

A patent may be found invalid for added subject matter and lack of technical effect, novelty, inventive step and sufficiency. A registered design may be found invalid for not complying with the legal definition of “designs”, for lack of novelty and inventive step, for contradicting public interests or third party rights and for being determined by technical function. A registered trademark may be found invalid for not complying with the legal definition of “mark”, for lack of distinctiveness, and for contradicting public interests or third party rights.

Singapore Small Flag Singapore

(a) Trade Marks. A trade mark may be challenged on the same grounds as that in an opposition, which include the following: that the trade mark is non-distinctive, descriptive, liable to mislead the public, that it was registered in bad faith, or that it conflicts with a senior mark.

A trade mark may also be revoked if it has not been used in Singapore for five years.

Trade mark invalidation or revocation proceedings may be commenced either at the Registry or in the High Court.

(b) Patents. A patent may be challenged on grounds that the patentable invention was not new, that the specification discloses additional matter, that an illegitimate amendment was made to the specification, or that the patent was obtained fraudulently.

The validity of a patent may be challenged at the Registry. If challenged in the High Court it must be by way of a counterclaim in an infringement suit.

(c) Industrial Designs. A registered design may be challenged on grounds including the following: that the design is not new, that the design is dictated solely by function, or that right holder is not the rightful owner of the design.

A registered design may be challenged either at the Registry or in the High Court.

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.

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               

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.

China Small Flag China

For patents: Invalidation requests relating to patents must be filed to the China National Intellectual Property Administration (CNIPA), together with invalidation evidence materials. After accepting the case, CNIPA will deliver the invalidation request and evidence to the patent owner, who will need to file a written response to CNIPA within statutory time limit, and CNIPA will hold an oral hearing with both parties and make a written decision afterwards regarding the validity of the patent in issue.

The grounds for invalidation are as follows: being unpatentable subject matter, lacking novelty and/or inventiveness over the prior art, lack of practicability, insufficient disclosure, lack of clarity, lack of essential technical features, double patenting, amendments extending the scope of original disclosure, non-compliance with requirements of confidentiality examination, and/or divisional application exceeding the disclosure of original application.

For trademarks: The forum for challenging trademark rights include: oppositions, invalidations, cancellations, and administrative proceedings, civil proceedings, criminal proceedings. See 26 for the grounds thereof.

South Africa Small Flag South Africa

Patents

All patent matters are dealt with by the Court of the Commissioner of Patents (High Court).

In terms of Section 61 of the Patents Act, any person may at any time apply in the prescribed manner for the revocation of a patent on any of the following grounds only, namely –

(a) that the patentee is not a person entitled under section 27 to apply for the patent;

(b) that the grant of the patent is in fraud of the rights of the applicant or of any person under or through whom he claims;

(c) that the invention concerned is not patentable under section 25;

(d) that the invention as illustrated or exemplified in the complete specification concerned cannot be performed or does not lead to results and advantages set out in the complete specification;

(e) that the complete specification concerned does not sufficiently describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be carried out by a person skilled in the art of such invention;

(f) that the claims of the complete specification concerned are not –

(i) clear; or
(ii) fairly based on the matter disclosed in the specification;

(g) that the prescribed declaration lodged in respect of the application for the patent or the statement lodged in terms of section 30(3A) contains a false statement or representation which is material and which the patentee knew or ought reasonably to have known to be false at the time when the statement or representation was made;

(h) that the application for the patent should have been refused in terms of section 36;

(i) that the complete specification claims as an invention a microbiological process or a prod-uct thereof and that the provisions of section 32(6) have not been complied with.

(2) An application for revocation shall be served on the patentee and lodged with the Registrar in the prescribed manner and shall thereafter be dealt with in the manner prescribed.

(3) The Commissioner shall decide whether the patent shall be revoked or whether and, if so, subject to what amendments, if any, of the specification or claims thereof, the patent shall be upheld: Provided that the Commissioner shall not allow any amendment which is in conflict with the provisions of section 51(6) or (7): Provided further that the Commissioner may in the exer-cise of his discretion as to costs take into consideration the conduct of the patentee in framing his specification and claims and permitting them to remain as so framed.

The Procedure for the Revocation of a Patent is as follows:

Letter of demand

A letter of demand to surrender the patent should be sent to the patentee before an application for revocation is lodged.

Application for revocation and statement of particulars

An application for revocation is made on Form P.20 and must specify the grounds on which the applicant intends to apply for the revocation of the patent. The application for revocation must be accompanied by a statement of particulars of the grounds on which the application is based and must be served on the patentee at its address for service in this country.

Counterstatement

1 If the patentee wishes to contest the application for revocation, a counterstatement in the form of a plea must be lodged with the Registrar and a copy of the counterstatement served on the applicant.

2 The counterstatement must be filed within two months after receipt by the patentee of the application for revocation.. The Registrar can extend this period by agreement between the parties or, in the absence of agreement, if good cause is shown.

3 If no counterstatement is filed the patent is deemed to be revoked.

Evidence

1 The applicant for revocation may within two months from the receipt by him of the counterstatement file evidence in support of his objections.

2 Within two months from the receipt of the copy of the applicant’s evidence or, if the applicant does not file any evidence, then within two months from the expiration of the time within which the applicant’s evidence should have been filed, the patentee may file evidence in support of his patent.

3 Within two months from the receipt of the copy of the patentee’s evidence the application may file evidence confined to matters strictly in reply.

4 No further evidence may be filed by either party except by leave or direction of the Commissioner of Patents.

5 Normally evidence filed by the applicant for revocation in support of his application, or by the patentee in support of his patent, is by way of affidavit, unless otherwise directed by the Commissioner of Patents. Copies of all affidavits filed by either party must be served on the other party.

6 The Registrar may extend the abovementioned periods by agreement or, in the absence of the consent of the other party, if good cause is shown.

Onus

The onus in revocation proceedings is on the applicant and revocation to establish his objections on a balance of probabilities.

Hearings

The hearing of the application for revocation takes place before the Commissioner of Patents.

Appeal

Subject to leave to appeal being granted, the decision of the Commissioner of Patents may be appealed against to the relevant Gauteng North High Court. Thereafter a further appeal lies to the Supreme Court of Appeal and possibly the Constitutional Court.

An application for revocation can often be heard within one year after the filing of the application, subject to the availability of dates on the court roll.

Revocation in patent infringement proceedings

Apart from the substantive revocation proceedings provided for in section 61 of the Patents Act No. 57 of 1978, a counterclaim for the revocation of a patent may in terms of section 65(4), be made by a defendant in patent infringement proceedings. Any ground on which the patent may be revoked may be relied upon by way of a defence.

Trade Marks – Opposition to the grant of a Trade Mark is lodged with an heard by the Commissioner of Trade Marks.

Opposition may be entered once a trade mark has been advertised in the Patent Journal. An interested party has three months from the date of advertisement to lodge an opposition. This term may be extended.

A Notice of Opposition is brought in accordance with form TM3 of the second schedule. It is supported by an affidavit which is sworn to before a Commissioner of Oaths or notarised. This affidavit must contain the grounds upon which the opposition is based and all evidence relevant thereto. The grounds upon which a trade mark are not registrable can be found in section 10 of the Act.

The Opposition Notice must be served upon the address for service of the trade mark owner, as appears from the Register, and also on the Registrar Trade Marks. Email service is acceptable.

The trade mark owner has two months within which it may give notice as to whether it intends defending the opposition. Once the Notice of Intention to Defend has been served upon the opponent and filed at the Registry, the trade mark owner has one month to lodged its answer. The answer is provided in an affidavit which is sworn to before thethe Commissioner of Oaths or notarised.

The Opponent has one month from receipt of the Answer to lodge a Reply on affidavit.

Once the papers have been closed, a hearing date will be allocated. At present, all matters are referred by the Registrar to the High Court , as they are no hearing officers appointed within the Registry. The act states that Heads must be provided two working days before the hearing date. If the matter has been referred to the High Court, obviously the High Court rules must prevail. A decision is usually handed down during the hearing before the Registrar, and the written confirmation of the order follows.

Expungement of a registered trade mark

Application for expungement from the register of the registered trade mark is also brought on Form TM3, with an affidavit commissioned before a Commissioner of Oaths, or notarised.

The grounds upon which a trade mark may be removed from the register are basically the same as those upon which an opposition may be based. it is also possible to expunge a trade mark on the basis of non-use, where that mark has not been used for a continuous period of five years after registration or there is no intention to use the mark.

The procedure followed is the same as in an opposition procedure: namely a Notice of Intention to Defend must be lodged within two months of the TM3. The Answer must follow within a month and then another month is granted within which to Reply. The hearing officer must be convinced that the mark was wrong the entered onto the register.

Once again, In practice, the Registrar is not hearing these matters, but referring to them to Court. in terms of the Act, the Registrar may hear the matter. She requires Heads to be lodged two days prior to the hearing.

Plant Breeders’ Rights

In terms of Section 17 of the Act, any person may lodge an objection with the registrar to the grant of a plant breeder's right in pursuance of an application in terms of section 7. The applicant may lodge with the registrar a counter-statement against such objection.

Cyprus Small Flag Cyprus

As aforementioned, a patent certificate may be challenged in Court or before the Registrar, either on substantive grounds (e.g. the patented invention was not novel) or on the grounds that the patent holder was not entitled to the patent award (e.g. a case of a patent application filed mala fide).

Similarly, as mentioned above, a trade mark registration may be challenged before the court or the Registrar for deletion of the mark from the Trade Marks Register or for invalidation, on grounds of non-use, in cases where the mark has become generic/ non-distinctive as a result of the trade mark owner’s behaviour or in cases where the mark has become deceptive vis-à-vis the nature, quality or geographical origin of the goods/ services in relation to which it is registered, due to the use of the mark made by the trade mark owner.

A design may be invalidated by a court decision on the basis of the following reasons: on substantive grounds (e.g. the design was not novel), in case where the design clashes with a prior design which has become known to the public after the filing of a priority application and that prior design is already protected with a filed Community application, a national application or an application filed in an EU Member State, the design owner is not an eligible owner as per the provisions of the relevant law, the design constitutes unauthorised use of a work which is protected under IP laws of Cyprus or of an EU Member State, the design constitutes inappropriate use of any elements set out in Article 6bis of the Paris Convention or of marks, emblems, armorial bearings other than those covered by Article 6B of the Paris Convention and which have a special importance in terms of public interest in Cyprus or in an EU Member State.

Japan Small Flag Japan

An invalidation trial against a patent, utility model, design or trademark can be initiated by filing a request for an invalidation trial with the Japan Patent Office. Any failure to meet the requirements for such right (such as novelty and inventive step) can be the grounds for invalidation. An invalidation trial is generally based on an adversarial system, but the board of examiners of the Japan Patent Office can make a finding with respect to a ground for invalidation that has not been raised by the parties.

An opposition against a patent or trademark can be initiated by filing an opposition with the Japan Patent Office. The grounds for opposition are somewhat limited compared to that of invalidation. For example, false inventorship cannot be raised in an opposition. An opposition is not based on adversarial system, but is rather like an extension of the examination procedure.

A non-use cancellation trial against a trademark can be filed for with the Japan Patent Office when the registered trademark has not been used by any of the trademark owner or its licensees for three consecutive years or longer.

Switzerland Small Flag Switzerland

The forum for challenging the registration of patents, trademarks, plant variety rights and non-agricultural PGI/POA, as well as for requesting the cancellation of a trademark for non-use directly before the IPI (administrative path), is the seat of the IPI in Berne. The forum for challenging the registration of agricultural PGI/POA is also Berne.

In civil proceedings, the forum depends on whether the case at hand is a national or international dispute. In national infringement cases, the claimant can potentially file its claim on cancellation of an intellectual property right in the following venues: its own domicile or registered office, the defendant's domicile or registered office, and the place where the infringing act occurred or had its effects. In international disputes, the claimant can potentially file its claim on cancellation of an intellectual property right in the following venues: domicile of the defendant, if no domicile in Switzerland, the Swiss courts at the domicile of the representative marked in the intellectual property register, if not available, at the domicile of the IPI in Berne.

The grounds for a finding of invalidity include prior rights, non-fulfilment of the legal registration requirements (e.g. for trademarks, relative or absolute grounds or refusal or for patents lack of novelty), non-use, expiry.

Brazil Small Flag Brazil

The forum is either the administrative authority on issuing the register (either the BPTO or the SNPC, in case of cultivar protection), or the federal court, once it is entitled to review unlawful administrative decisions of federal administrative organisms. As for the grounds for a finding of invalidity, it depends on the IP right, once the most common ground is the lack of any requirement for granting the IP right (e.g. patentability requirements, trademark requirements, etc.).

United Kingdom Small Flag United Kingdom

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 publication must either disclose each aspect of the claimed 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 publication. To establish lack of inventive step, any differences between the prior publication 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 be "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 measures, such as experiments 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 "absolute grounds" (on the basis that the trade mark itself is not the type of trade mark that is capable of registration), "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

Israel Small Flag Israel

Oppositions and cancellations are brought before the Registrar of Patents, Trademarks and Designs. The same arguments can also be raised before the court.

Cancellation proceedings resemble those of a trial (common law approach), with submission of evidence in the form of affidavits, cross-examination of the affiants and written summations.

Patents: The grounds for pre-grant opposition may also be the basis for a cancellation application

  1. any reason, because of which the Registrar could have refused to accept the patent application (including novelty, inventiveness, sufficiency of disclosure, utility, validity and so forth);
  2. the invention is not patentable because it is not novel due to exploitation or exhibition of the invention in a manner that enables a skilled person to make it according to the particulars thus made known;
  3. the opponent, and not the applicant, is the owner of the invention.

Designs: Grounds for cancellation include: 1) design not eligible for registration (due to lack of novelty and/or originality under previous ordinance, or lack of novelty and individual character, under new law. 2) design application not filed by design owner; 3) two applications filed for same (or substantially similar) design.

Trademarks: See (28) above.

Germany Small Flag Germany

Intellectual property rights can be challenged before the respective office which granted the right and/or (if these proceedings fail) before the regular courts. Grounds for invalidity include e.g. non-eligibility for protection, cessation of the owner, failure to use a trade mark in a genuine way or that rights have been registered in bad faith.

Italy Small Flag Italy

Under Article 120 IPC, the IP related proceedings shall be brought before the court where (i) the defendant has its residence or domicile; if not applicable, where (ii) the plaintiff has its residence or domicile; or, if not applicable, (iii) before the Court of Rome. The domicile could be determined considering the domicile indicated in the IP rights registration form. In the case of claim of infringement, the proceedings can also be brought before the court where the infringement occurred.

As for the procedure, see answer to question n.19.

The invalidity of the IP rights may be claimed on the basis of certain grounds:

  • The invalidity of the patent can be declared when the invention (i) does not fall within patentable subject matter, (ii) is not new; (iii) does not imply an inventive step; (iv) is not capable of industrial application.
  • As for design, the claimant should demonstrate that the design is not new and that (i) it does not have individual character, (ii) that is contrary to public order or morality or (iii) that its features are dictated by the technical function performed.
  • With regard to trademarks, the claimant, in order to obtain a declaration of invalidity of the sign, should demonstrate that the trademark (i) lacks distinctive character, (ii) is identical or similar to previous registered or unregistered trademarks, (iii) is contrary to law, public order and morality, (iv) infringes other IP rights.
  • With reference to copyright, considering that a copyrightable work should be the expression of the author's creativity and the result of its intellectual creation, the claimant may claim the invalidity of the copyright by proving that the work lacks originality, that is to say it is similar to prior works.

Greece Small Flag Greece

  • Patents, utility models and industrial designs can be challenged before the civil courts via a nullity action or as a defense in infringement proceedings.

    Patent nullity grounds: (a) the invention does not meet the requirements of novelty, industrial applicability and/or involving an inventive step, (b) the disclosure contained in the patent is insufficient for the patent to be carried out by the person skilled in the art, (c) the subject matter of the patent is excluded from patentability, or it goes beyond the content of protection as requested in the application, and (d) the patentee is not the true inventor or inventor's successor.

    Utility model nullity grounds: (a) the utility model is not new or industrially applicable or a three-dimensional object with definite shape and form, and/or capable of giving a solution to a technical problem, and (b) 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: (a) the design or model is not new or of individual character, (b) 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, (c) exploitation or publication is contrary to public order or established morals and (d) the holder of the registered design is not the true designer or designer's successor.

  • Trademarks: The forum for challenging trademarks is the Greek TM Office (Administrative Trademark Committee) and, on further recourse/appeal, the administrative courts.

    Registered marks may be challenged in whole or in part on either absolute or relative grounds.

    The absolute grounds include that a mark:

    o is devoid of distinctive character;
    o consists exclusively of signs or indications which may serve in trade to designate the kind, quality, attributes, quantity, destination, value, geographical origin or the time of the goods production or of the service rendering or other characteristics of the goods or service, designates the kind, quality, intended purpose, value, or geographical origin of goods or services, or other characteristics of goods or services;
    o has become customary in the current language or established practice of the trade;
    o 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 or gives substantial value to the goods;
    o is contrary to public policy or morality;
    o may deceive the public for example as to the nature, quality or geographical origin of the goods or service;
    o consists of names of countries, flags, emblems and similar symbols, including signs of great symbolic value and special interest - particularly religious symbols, representations and words.
    o has been filed in bad faith;

    Relative grounds include that a mark:
    o is identical or confusingly similar to an earlier mark;
    o is identical or similar to an earlier mark which has a reputation 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;
    o infringes an unregistered trademark or any other distinctive sign or feature used in trading, which gives the proprietor the right to prohibit the use of a later trademark;
    o infringes a prior personality right of a third party or a prior right of intellectual or industrial property other than those regulated by Trademark Law;
    o is likely to cause confusion with a trademark which has been registered and used abroad at the time of the application filing, if it was made in bad faith by the applicant;

    Trademarks can also be revoked for non-use for a continuous period of 5 years;
    Unregistered designs and marks may be challenged before the civil courts, as a rule in the context of a defense in infringement proceedings. The main grounds of invalidity of such rights are lack of any distinctive character, descriptiveness or deceptiveness as to the nature, quality or geographical origin of the goods or services, and non-use in trade.

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.

Trademarks: 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.

Peru Small Flag Peru

The forum is the National Institute for the Defence of Competition and Intellectual Property (INDECOPI).

The procedure is related to prove a better right within the mentioned period in question 27.

The grounds for a finding of invalidity, listed below:

(a) Patents:

  • The subject matter of the patent is not an invention.
  • The invention fails to comply with the requirements for patentability.
  • The patent fails to disclose the invention.
  • The claims included in the patent are not fully substantiated by the description provided
  • The use of the patent granted has been broader than what was indicated in the original application and requires having to extend its scope of protection.
  • The products or processes in respect of which the patent is being filed have been obtained and developed on the basis of genetic resources or their byproducts originating in one of the Member Countries, if the applicant failed to submit a copy of the contract for access to that genetic material
  • When pertinent, the products or processes in respect of which the patent is being filed have been obtained and developed on the basis of genetic resources or their byproducts originating in one of the Andean Member Countries, if the applicant failed to submit a copy of the contract for access to that genetic material.
  • When pertinent, the products or processes whose protection is being requested have been obtained or developed on the basis of traditional knowledge belonging to indigenous, African American, or local communities in the Andean Member Countries, if the applicant has failed to submit a copy of the document certifying the existence of a license or authorization for use of that knowledge originating in any one of the Andean Member Countries.
  • There are grounds for absolute invalidation according to Peruvian legislation covering administrative acts.

(b) Trademarks:

  • The trademark was granted without meeting the absolute requirements to be registered (lacking in distinguishable characteristics; consists solely of the everyday shape of goods or their packaging, or of shapes or characteristics dictated by the nature or particular function of the product or service in question; consists solely of a sign or statement that may serve in commerce to describe the goods or services for which they are to be used; consists exclusively of a sign or statement that is the common or technical name of the product or service concerned; etc.).
  • The trademark was granted in violation of the Intellectual Property Right of a third party.

(c) Copyright:

  • The registration has been granted in contravention of any of the provisions contained in the Copyright law.
  • The registration was granted based on false or inaccurate data in its application, as long as they are essential.
  • The registration has been granted on the basis of documents previously declared false or inaccurate by competent authority, as long as they are essential.

Malta Small Flag Malta

Trademarks

The Maltese Trademarks Act provides for the instances in which one may request the revocation of a trademark, which in essence are related to a five-year period of non-use following the date of registration. The mark may also be challenged if, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered. And finally, the mark may be challenged if due to the use made of it, it is liable to mislead the public in relation to the goods or services for which it is registered, particularly as to the nature, quality or geographical origin of those goods or services. Revocation proceedings must be filed by sworn application before the First Hall of the Civil Court.

The registration of a trademark may also be declared invalid on the ground that the mark was registered in breach of the absolute grounds concerning trademark registration.

In proceedings before the Court involving a demand for the revocation of the registration of a trademark, or a declaration of the invalidity of the registration of a trademark, the Comptroller of Industrial Property shall be notified with the proceedings and shall be entitled to appear and to be heard if so directed by the Court.

In the case of bad faith in the registration of a trademark, the Comptroller of Industrial Property may apply to the Court for a declaration of the invalidity of the registration.

Patents

As previously mentioned, there are two procedures for the revocation of a patent. This was be filed either with the Comptroller of Industrial Property or before the Patents Tribunal.

When a notice for revocation is filed with the Comptroller of Industrial Property, it may only be made:

(a) where the patent concerns an invention in respect of which, before the filing date or, where priority is claimed, before the priority date of the application of said patent, there already exists a published patent; or

(b) in respect of a patent where there is a priority claim, on the grounds that –

(i) the application for a patent on the basis of which priority was claimed was originally filed at another Patent Office more than one year before the filing date of the application of the patent in respect of which a notice for revocation has been filed with the Comptroller; and

(ii) the application on the basis of which priority was claimed or the resulting patent were published by the other Patent Office referred to in sub-paragraph (i) before the filing date of the application of the patent in respect of which a notice for revocation has been filed with the Comptroller.

The Comptroller of Industrial Property will initiate proceedings before an arbiter to determine the case brought before him after ninety days from the date of service by him of the notice for revocation to the owner of the patent.

A notice for revocation filed directly before the Patents Tribunal may only be based on the following grounds:

(a) that the subject matter of the patent is not patentable;

(b) that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) that the right to the patent does not belong to the person to whom the patent was granted;

(d) that the subject matter of the patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application, beyond the content of the earlier application as filed; and

(e) that the protection conferred by the patent has been extended by an amendment which should not have been allowed.

A notice for revocation may not be filed with the Patents Tribunal if it has already been filed before the Comptroller of Industrial Property and vice versa.

Grounds for a finding of invalidity of registered designs

The Patents and Designs Act provides that the registration of a design may be declared invalid on the grounds that if it does not fulfil the basic requirements established by law (novelty and individual character); if the design constitutes an unauthorised use of work protected under copyright; or if it involves the use of the armorial bearings, flags or emblems, and names or abbreviations of international intergovernmental organisations.

France Small Flag France

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).

i. Patent

Pursuant to article L.613-25 of IPC, a patent can be declared invalid on the ground that:

• the invention:

o is excluded from patentable subject matter (see Article L.611-11 and L.611-16 of the IPC);
o is not novel;
o does not involve an inventive step;
o 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.

ii. Trademark

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 the article L.711-4 of the IPC.

It should be noted that, pursuant to the Bill of law PACTE, nullity and revocation proceedings against French trademarks should be introduced before the French Office by January 14, 2023 and, regarding French patents, an opposition procedure before the French Office should be created.

iii. Designs

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.

iv. Copyright

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.

Ecuador Small Flag Ecuador

The forum of challenging each of these rights is made before the competent authority through an action of nullity or cancellation of the right, or by the request of a compulsory license.

The reasons to determine the disability is that it has lost the object for which it was granted, that the owner has stopped using the right for a certain time or that the protection of the same has expired.

In the case of patents and utility models

  • If the object of the patent is not an invention
  • If the patent was granted for a non-patentable invention
  • If the invention does not comply with the patentability requirements;
  • If the patent does not sufficiently disclose the invention;
  • If the claims included in the patent were not entirely supported by the description;
  • If the granted patent contained a broader disclosure than in the initial application and this implied an extension of the protection.
  • If the patent has been granted with any other violation of the law that has substantially induced its concession.
  • Lack of use or exploitation for more than 3 years
  • Lack of annual maintenance payment


Scheme layout:

  • If it does not result from its creator´s effort,
  • The registration object did not constitute a layout design,
  • The registration was granted for a layout design submitted after 2 years.

Industrial design:

  • If the registration object did not constitute an industrial design;
  • If the industrial design is not new;
  • The registration was granted for a subject excluded from protection as an industrial design;

Trademark:

  • When the acquisition was granted based on false data or misleading documents that were essential for its granting;
  • When the brand does not distinguish a product or service or has been vulgarized,
  • When reproducing or imitating a right already granted.
  • Lack of use for more than three years


Plant variety production:

  • If the variety subject to the Breeder's Right did not comply with the requirements of novelty, distinction, stability and homogeneity at the time of granting the certificate;
  • If it had been granted to those who did not have the right to it;
  • If the copy of the access contract has not been presented, when the variety has been obtained or developed from genetic resources or derived products of which Ecuador or any of the member countries of the Andean Community is a country of origin;
  • If the reasons for nullity established in the law for administrative acts were set;
  • If it has been granted with any other violation to the law that has substantially induced its concession or has been obtained based on false or erroneous data, information or documents.
  • Lack of annual maintenance payment

Saudi Arabia Small Flag Saudi Arabia

For opposition proceedings, please refer to answers in question 7 & 8. Invalidation of trademark can be filed before the Administrative Court. In invalidation action the plaintiff must prove that the registration of trademark is unlawful. The law does not clarify the conditions of unlawfulness however the understanding is that if registration is contrary to any provision of Saudi Trademark Law, it should be considered as unlawful. Prior use right can also be the basis for filing invalidation action. In case of non-use cancellation action, the plaintiff must prove that the registered trademark was not used for consecutive 05 years.

Saudi Patent Committee is the competent forum to invalidate a valid patent. Invalidity action can be initiated on the following grounds:

  1. the invention lack novelty at the time of filing;
  2. the invention lacks inventive step;
  3. the invention is not industrially applicable; the subject matter of the patent is hit by exclusionary subject matters
  4. commercial exploitation of the invention violates Islamic principles;
  5. commercial exploitation is harmful to life, to human, animal or plant health, or is substantially harmful to the environment.

Australia Small Flag Australia

Challenges can be brought before the relevant office that granted the intellectual property right (within the prescribed opposition time frame) and before the Federal Court and Federal Circuit Court of Australia.

Patents: A patent will be found to be invalid if it: is not a manner of manufacture; lacks novelty; does not contain an inventive (or in the case of an innovation patent, an innovative) step; is not useful; has been secretly used; is for a human being and the biological processes for their generation. A patent may also be revoked if the patentee is not entitled to the invention, or if the patent was obtained by fraud.

Registered Trade Marks: A trade mark may be subject to revocation if it contains a sign that has become descriptive; if any of the grounds on which the registration could have been opposed can be made out; if it was fraudulently obtained; or if it is likely to deceive or cause confusion.

Registered Design: The validity of a design is a question of whether the design is new and distinctive. The examination of a design is limited to the question of whether it is a registrable design (that is, new and distinctive). The test of newness involves a very narrow test of identicality and most objections to the validity of a design will be a lack of distinctiveness.
 
 

United States Small Flag United States

Patents:  Patent rights can be challenged in federal district court, at the U.S. Patent and Trademark Office, or at the International Trade Commission which deals in importation of allegedly infringing goods. As a procedural matter, challenges to patent rights in court or at the International Trade Commission occur as defense to infringement. Affirmative challenges at the U.S. Patent and Trademark Office can take the form of requests for post-grant proceedings to cancel patent rights. A patent may be invalidated or not issued if it is found not to conform with statutory requirements such as not directed to patentable subject matter (35 U.S.C. § 101), not being new or novel (35 U.S.C. § 102), obvious over the prior art (35 U.S.C. § 103), or failing to properly describe or enable the invention (35 U.S.C. § 112).

Trademarks:  Trademark rights can be challenged in court, at the U.S. Patent and Trademark Office, or at the International Trade Commission. At the time of proposed registration, a party can file an opposition. After a grant, a party can file for cancellation of a mark. In defense to a charge for infringement, a party can challenge the trademark registration. To show that a trademark should be cancelled, a challenger must show that the mark fails to meet statutory requirements.

Copyrights: Generally, a challenge to copyrights occurs in response to allegations of infringement. A party may challenge a copyright by showing that it fails to meet common law or federal requirements for copyrightable material (for example, the alleged rights are actually to the particular utility of a copyright and not the work itself).

Trade Secrets:  Challenges to trade secrets occur in response to allegations of misappropriation, in state or federal court as well as the International Trade Commission.

Updated: September 12, 2019