When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Intellectual Property (2nd edition)
During the registration process, a third party can submit objections to Rospatent alleging that the trademark or invention application does not meet registrability requirements. After the registration, an invention, utility model or design patent can be invalidated, in whole or in part, at any time during its period of validity and after the patent validity period expires.
As to the registered trademark, the term for filing for invalidation depends on invalidation grounds:
- a request that is based on absolute grounds can be filed during the entire period of validity of the mark;
- a request that is based on relative grounds (e.g. prior rights) can be filed during five years following the publication date;
- a request that is based on non-use can be filed with respect to the trademark that, as of the date the cancellation request is filed, has not been used for the past three consecutive years.
Trademarks: When an application has been given preliminary approval, an opposition can be filed against the mark within 3 months since its publication in the gazette. After the rights are granted, invalidation against the registered mark based on prior rights can be requested within 5 years since the date of publication for registration. In the event of malicious registration, owners of well-known trademark may exempt from the five-year duration. An application for cancellation due to non-use can commence after a mark has been published for registration for 3 or more years.
Copyright: A challenge to copyright is usually made by the party who is attacked for copyright infringement in civil court proceedings.
Patents: Observations and prior art documents can be submitted to SIPO after a patent application is published but not yet granted. After the rights are granted or registered, an invalidation request can be filed, even for an expired patent.
The validity of IPRs can be challenged either during the registration process or during their subsistence depending on the type of the rights concerned.
During the registration process:
Since copyright protection arises from the mere creation without any prior registration requirement, there is no opposition procedure organized under France law.
- Design and model:
There is no opposition procedure organized before the French Office.
During the registration process of a French patent, third parties can submit observations within three months from the date of publication of the preliminary search report relating to a patent application (Article R. 612-63 of the IPR). However there is no opposition procedure before the French Office.
During the registration process of a French trademark, the holder of prior rights can oppose to the registration of trademark within two months from the publication of the application. In addition, any third party can submit observations before the French Office.
Following the grant of the right:
The originality of the work allegedly protected by copyright can be discussed before the Court in case of infringement action.
- Design, patent and trademark:
The validity of the right can be challenged before the French Courts either by way of a legal action or by way of a means of defence (see question 27).
Finally, it should be noted that ownership of registered rights can also be challenged on the grounds that the application has been fraudulently filed by an unauthorised party) within five years from the grant of the right (except when bad faith is also established) (see. Patent: Article L. 611-8, Design: ArticleL.511.10, Trademark: Article L.712-6 of the IPC).
IP rights may not be challenged during the registration process.
An opposition to a trademark or PGI/POA registration must be submitted within 3 months from the registration's publication. An opposition against a patent must be filed within 9 months from the date the patent was granted.
A claim on the merits can be filed at any time, subject to the rights not being forfeited. There is no fixed time period for the forfeiture of rights, which may however occur if the plaintiff has tolerated the infringement for an extensive period of time (several years).
Whereas there is no time limit for filing interim measures, such request is subject to the condition of urgency, which requires the applicant to act promptly upon discovery of the infringement.
Damages claims related to IP infringement become time-barred 1 year from the date on which the claimant became aware of the damage and of the identity of the infringer, but in any event 10 years after the date on which the damage occurred.
Certain legal instruments may only be used within a specific term, while others are valid at any time during the subsistence of the right. See question 27 for details.
Under Italian Law, the validity of the IP rights may be challenged by the interested parties after the granting of the IP rights by bringing legal action against the IP owner, while for the trademark it is possible to challenge the validity of the right also after the registration process through the opposition procedure. Particularly, Article 176 of the IPC states legal grounds for the opposition as:
- the rights deriving from the registration of a national trademark or a foreign trademark with effect in Italy that is identical to the trademark to be opposed and registered for identical products and services (Article 12 (1) let. (c) of the IPC);
- the rights deriving from the registration of a national trademark or a foreign trademark with effect in Italy that is similar and registered for identical or similar products and services (Article 12 (1) let. (d) of the IPC); or
- the lack of consensus by the natural or legal person entitled to the name, surname or personal image, in the case of registration of a trademark of a name, surname or image belonging to person different to the registrant (Article 8 of the IPC).
The deed of objection must be filed before the IPTO within three months from:
- the date of publication in the Official Gazette of company trademarks of the application for registration of a trademark considered recordable by the IPTO (Article 170 let. (a) of the IPC);
- the date of publication in the Official Gazette of company trademarks of registration of a trademark, the application of which has not been published (Article 179 (2) of the IPC); or
- the first day of the month following the publication in the WIPO International Trademark Gazette of the registration of the international trademark.
The deed opens the administrative proceedings before the IPTO, which lasts from 24 to 36 months.
For patents, any person can file an application for cancellation of a patent certificate before the Court any time after the granting of a patent.
In regards to trade marks, an opposition can be filed within two months from the date of publication of the application during the registration process and invalidity application can be filed any time after the registration of the trade mark.
For designs, any interested person can file an application for cancellation of registration before the Court any time after granting of protection.
A challenge to Patents, Designs and Copyrights can be made throughout the right period. Patents – 20 years, Designs – 25 Years (according to the new Designs Law), and copyrights – during the life of the author and for 70 years after his death.
In patents and trademarks - A request for opposition may be filed after the acceptance of the mark, prior to its final registration (Pre-grant opposition). Trademarks may be challenged at any time by filing a cancellation request on grounds that the mark has not been used in the last 3 years , or on the grounds that the registration was achieved in bad faith. Other grounds for cancellation, may be raised only in the first 5 years after the marks’ registration.
The ownership of a trademark can be challenged during its registration process within thirty days following its publication in the Official Gazette.
Likewise, it is possible to challenge a registered trademark by means of a nullity action, which may be filed up to five years from the date of registration. However, in the case of trademarks that have been requested in bad faith, this period is imprescriptible.
- Patents of invention/ utility models / industrial drawings and designs / layout designs (topographies) of integrated circuitslayout designs (topographies) of integrated circuits:
Ownership of patents of invention / utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits can be challenged during their registration process within forty-five days following its publication in the Official Gazette.
Likewise, it is possible to challenge patents of invention/ utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits already granted through a nullity action, which may be submitted up to five years from the date of its registration.
Trade marks may be challenged either prior to registration by way of an opposition or after registration by way of a cancellation action.
The other registered rights described in section A may only be challenged after they are registered.
Non-registered IP rights can be challenged at any time during the subsistence of the right.
While an application for a patent is pending (whether in the UKIPO or EPO), a third party can challenge the grant of the application through the third party observation ("TPO") procedure. Through this procedure, the third party files its observations with the intellectual property office examining the application (either the UKIPO or EPO) and the examiner will consider the observations. This is an ex parte procedure – once the TPO has been filed, the third party will have no further involvement in explaining or debating the observations or objections filed.
After a UK patent has been granted, a third party can seek to challenge and revoke the right at any time, either through the civil courts or the UKIPO.
For European Patents, once the application has been granted, its validity can be challenged by filing an opposition. Oppositions must be filed at the EPO within 9 months of the patent being granted. Oppositions are inter partes procedures, where the third party opponent may file an opposition brief and evidence, and may attend hearings. If the opposition is successful, the European Patent will be revoked in its entirety – in each country designated on the patent.
In addition, at any time after the grant of a European Patent covering the UK, any person may seek revocation of the UK designation in the UK Court.
Registered trade marks
For trade marks, oppositions may be filed at the relevant intellectual property office (UKIPO for UK applications, and the EUIPO for EU trade mark applications) within three months of the application being published. (For UK trade mark applications, there is an initial two month opposition period, which can be extended to three months.) The opposition procedure is similar to that for patents, being an inter partes procedure in which the third party has a continuing role in challenging the registration.
Third party observations may also be filed at the relevant intellectual property office. The procedure is similar to that for patent applications - the third party will not be involved beyond the original submission of the observations. TPOs can be filed within the 3 month period from the publication of the application or, if an opposition is filed within that period, TPOs can be filed any time before the final decision in the opposition.
For registered designs, the third party must wait until the right has been granted before it can be challenged. It can then be challenged at any time in the EUIPO (in the case of Community Registered Designs) or the civil courts of UKIPO (in respect of UK Registered Designs).
A challenge to the IP rights may be made after publication as well as during the subsistence of the right.
During the registration process and at any time during the subsistence of the right.
The validity of patents can be challenged after they have been issued while application for trademark registrations can be challenged after the registrations have been published. And copyright registrations can be challenged after those registrations have been asserted against an alleged infringer.
There are various types of challenges to intellectual property rights, at different periods in time.
Invalidation proceedings: In an infringement action, the defendant can challenge, in the same action, the validity of the patent. The validity of a patent may also be put in issue in proceedings for a declaration of non-infringement.
In an action for infringement of a trade mark, it is common for the defendant to counterclaim with an application for cancellation, which can be an action on its own or as a counterclaim.
Any interested person as specified under the Act may request the Registrar to cancel or rectify the registration of a geographical indication.
The defendant can argue on the subsistence of copyright.
Application to rectify the Register by including, making, expunging or varying any entry in the Register or correcting any error or defect in the Register as it deems fit must be made by an aggrieved person or interested party.
In cases of Opposition of trademark applications, the Opposition must be filed within thirty (30) days after the publication of the application for purposes of opposition in the IPO e-Gazette.
When a trademark has already been registered, a Petition for Cancellation may be filed after the mark is registered but no later than five (5) years from the date of registration of the mark, unless it falls under any of the following instances, in which case, the Petition for cancellation may be filed at any time after the registration of the mark:
a. if it becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned;
b. if the registration was obtained fraudulently or contrary to the provisions of the IP Code;
c. if it is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used; and
d. if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.
A Petition for cancellation of a patent or any claim thereof may be filed only after the issuance of the Letters Patent.
UAE national patents, utility certificates and designs: can be opposed within 60 days of the publication date. An interested person can file post-grant cancellation actions with the UAE Courts at any time.
GCC patents: can be opposed within 3 months of the publication date.
Trade marks: can be opposed within 30 days of the publication date by any concerned persons. Non-use cancellations can be filed where a registered mark has not been used for an uninterrupted five year period. Cancellation actions on other grounds can be filed at any time, though where the registered mark has been used continuously for at least five years from the date of registration without challenge, no dispute may be raised against the ownership of the mark.
UAE copyright recordals: once a final judgement has been obtained from a court
During the subsistence of the right.
Patent: Any person can file a pre-grant opposition to the grant of a patent after the publication of the application and before the grant of the patent. A post grant opposition can be filed by any person interested anytime before the expiry of one year from the date of publication of the grant of the patent. A revocation can be filed at any time after the grant of the patent.
Designs: Any interested person can file a cancellation petition at any time after the registration of the designs
Geographical indications: Within three months from the date of advertisement or readvertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar allows. In case a Geographical indication is registered then a cancellation action can be filed against the same.
Trademarks: An opposition can be filed within 4 months of publication of a trademark application in the journal. In case a mark is registered then a cancellation action can be filed against the same.
Further, a civil or criminal action can be taken at any time (before or after registration) under the writ jurisdiction of the High Court, subject to the rules of writ jurisprudence.
Patents - For patents, the patent validity may be challenged at any time.
Trade marks - Opposition may be filed within three months from the date of the publication of a trade mark. The claim for invalidation of a trade mark may be filed no later than 5 years after the person learned about the use of this trade mark. A claim for revocation may be filed any time accordingly taking into account that a period of five successive years must have passed after the registration/last time the trade mark was used.
Any third party is entitled to challenge applications for registration of IP rights (patents, designs, trademarks, plant variety) as soon as they are published for opposition purpose until prior to the point of time they mature into registration.
Upon registration, IP rights may be totally terminated/invalidated (eg. no annuity/renewal fee are made) or partially or totally cancelled (eg. the applicant for registration had neither entitlement to register nor had been assigned the right to register those IP rights).
Prior rights can be invoked during opposition proceedings, but also thereafter at any time. Challenges to the validity of rights can usually be done before the offices or in court and/or as counterclaim in infringement proceedings.
Trade marks may be challenged any time during the subsistence of the right. However, infringement proceedings are time barred by a period of five years.
The Maltese application process is soon set to change, and the introduction of oppositions to national trade mark applications will soon be introduced.
An application for the revocation of a patent may be filed by any person after the publication of the grant of the patent. Similarly to trade marks, infringement proceedings are time barred with a period of five years.
After the patent application is published, third-parties may file a petition presenting arguments against the granting of such application until the end of the technical examination. After it is granted, an administrative nullity procedure is available within 6 months of the date of publication of the grant. This grant can also be challenged in court through a nullity action, during any time, as long as the patent is valid.
Regarding industrial design registrations, an administrative nullity procedure is available within 5 years from the date of publication of the granting of this IP right. Court actions may also be filed within the period that the industrial design is valid.
As for trademarks, interested third-parties may oppose to the registration within 60 days from the publication of the trademark application, or file an administrative nullity procedure within 180 days from the publication date of the granting. As for court procedures, the period for filing a court nullity action expires in 5 years from the date of granting.
As for copyright law, this question poses a tough challenge, if we keep in mind that the registration of a copyright is merely declaratory of rights. In court, the economic rights of the author may be challenged within 3 years if it is derived of a non-contractual violation, whereas if it is similar to a contractual violation, it can be questioned in court within 10 years, according to the Brazilian Superior Court of Justice.
A cultivar application can be challenged within 90 days from its publication date. An administrative nullity procedure before the SNPC is also available, as well as a nullity court action.
A challenge may be made during the registration process for patents, trademarks and designs via third party observations (patents) or informal protests (trademarks and designs).
All of the intellectual property rights described in section A may be challenged once the right has come into being (upon registration for the abovementioned registrable rights).