Who can challenge each of the intellectual property rights described above?
Intellectual Property (3rd edition)
According to Norwegian law, anyone can challenge patents, designs and trademarks. The same apply for business names, provided that legal standing is demonstrated.
There are no locus standi requirements to bring invalidation or revocation proceedings against a patent or trade mark. Any person may institute such proceedings.
Revoking a registered design, however, requires a plaintiff to have an interest in the matter.
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 person may file a claim.
For patents, only interested parties can file for an invalidation trial with the Japan Patent Office. An opposition can be filed with the Japan Patent Office by any person.
For utility models and designs, any person can file for an invalidation trial with the Japan Patent Office except in the case where the grounds for invalidation is false creatorship (i.e. argument that the applicant of the utility model or design is not the creator or his/her assignee), in which case only interested parties can file for an invalidation trial.
For trademarks, only interested parties can file for an invalidation trial with the Japan Patent Office. An opposition can be filed with the Japan Patent Office by any person. A non-use cancellation trial can be filed for with the Japan Patent Office by any person.
As a general rule, any person who can demonstrate a legal interest. Oppositions to trademark registrations may be filed by the owner of an earlier registered trademark or the owner of an earlier well-known not registered trademark.
As for administrative procedures, any party with legitimate interest may file a petition opposing the grant of an IP application, except for industrial designs, as the Brazilian IP law does not cover this possibility. Furthermore, it is also possible, even for industrial design rights, to challenge the administrative decision that granted an IP right. In respect to design rights, third parties may request that the BPTO conducts substantial analysis of the registered design, by which the conditions of originality and novelty will be examined and, if proven inexistent, the BPTO will file an ex officio administrative nullity procedure.
With regard to civil court procedures, the general conditions to litigate in Brazil are “the right of action”, which indicates that the plaintiff is an interested party, and “standing to sue”, which can be identified by the necessity of the action and its utility to the plaintiff, that is, it is convenient to obtain what the plaintiff seeks.
With that in mind, the infringement or the threat of infringement of an IP right can be questioned in court.
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: Oppositions may be submitted by any third party. Cancellation of a granted patent may be submitted by any party.
Copyrights: The defendant in a copyright action may claim that the plaintiff does not own the rights or did not create the allegedly infringing work.
Trademarks: Any person and/or legal entity may file an opposition or a cancellation.
Designs: There are no oppositions to design registrations; cancellation of granted designs may be submitted by any person.
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.
Owners of prior rights based on these. In addition, anyone can file for cancellation claiming that the IP right is not eligible for protection.
The grounds of challenge are distinguished between absolute and relative grounds.
Absolute grounds of cancellation are ones in which there are no prior private rights or interests violated by the registration of the IP rights. According to Article 122 (1) of the IPC, absolute grounds of cancellation could be invoked by everyone with a legitimate interest (e.g., a competitor in the case of a deceptive trademark) and by the public prosecutor.
Relative grounds of cancellation concern a prior right owned by a third party (e.g., prior registered or non-registered trademark). In those cases, the claim could be made only by the right-holder (Article 122 (2), IPC).
The grounds of revocation are considered absolute grounds and therefore could be invoked by everyone with a legitimate interest and by the public prosecutor (Article 122 (1), IPC).
Any natural person or legal entity having a legitimate interest may challenge the IP rights described in questions 1-3.
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 interested person 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.
Trademark: 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 trademark 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 interested party through an opposition, an action claiming ownership, an application for declaration of invalidity of registration or a cancellation of registration in case of trademarks. Even the Peruvian Intellectual Property Authority ex officio may decree the invalidity of registration; and regarding trademarks, also the cancellation of registration (in case of vulgarization).
Any person who wishes that a patent is revoked may challenge the patent. After publication of the grant of the patent, such person must file a notice for revocation either with the Comptroller of Industrial Property or before the Patents Tribunal. Revocation of a patent may also be filed as a counter-claim to patent infringement proceedings.
Any person may challenge a trademark, by bringing an action for revocation by sworn application before the First Hall, Civil Court.
Any person lawfully using any name, mark or distinctive device may challenge any other trader using such name, mark or distinctive device which is capable of creating confusion.
The grounds for an action to declare a design right invalid may be filed by the applicant for or holder of a conflicting right. In the case of armorial bearings, flags, emblems, and names of intergovernmental organisations, the application may be made only by the person entitled to the right.
Any one has legitimate interest or the intellectual property competent authority regarding compulsory licences and administrative tutelage procedures.
For opposition proceedings, please refer to answers in question 7 & 8. Any interested natural or legal person can challenge the validity of a trademark and Patents.
Challenges before the relevant intellectual property office:
Trade marks: Any interested third party is able to oppose the registration of a trade mark.
Patents: Any person may oppose the grant of a patent (or certified innovation patent).
Designs: A third party may request examination of a registered design, which tests the validity of the design registration.
Plant Breeder’s Rights (PBR): An opposition to an application for PBR can be made by any person who considers that their commercial interests would be adversely affected by the grant of that PBR, or by any person who considers that the application is incomplete or incorrect.
Challenges in court:
Usually the owner of an intellectual property right will bring an action against an alleged infringer, although in some cases an exclusive licensee or authorised user will also hold the right to sue. When court proceedings are brought, it is common for the respondent to the application to cross-claim and seek to challenge the validity of the intellectual property right that is being asserted.
Patents: Accused infringers can challenge patent rights as a defense. Third parties can also challenge patent rights in proceedings before the United States Patent and Trademark Office through the use of ex parte reexamination, inter partes review, post grant review, and to a limited extent covered business method review.
Trademarks: Accused infringers can challenge trademark rights as a defense. Third parties can also challenge trademark rights in proceedings before the United States Patent and Trademark Office through the use of cancellation proceeedings.
Copyrights: Certain rights to copyrightable material attach as soon as a work is completed. However, an accused infringer may challenge the registrability of a copyright in legal proceedings.
Trade Secrets: Generally, and as a practical matter, accused infringers will challenge the sufficiency of trade secrets during legal proceedings.