Who can challenge each of the intellectual property rights described in questions 1-3?
Everybody that claims to have rights over the respective IP right.
Any interested party may challenge the validity of the intellectual property rights described in section A. The validity of Benelux trademarks and designs may also be challenged by the Public Prosecutor.
Any person may challenge the intellectual property rights described above.
The validity of registered IPR can be challenged:
- by way of action by the public prosecutor who may act ex officio as well as any third party with a legitimate interest, especially, the owner of a prior rights or the operator willing to conduct its activity without any threat of infringement
- in case of infringement proceedings, by way of defence by the alleged infringer.
R: Usually, only the owners of previous rights may challenge the new owners/applicants. Some rights may also be challenged by any interested party (including the state), even if they are not owners of previous rights.
Patents: Any person interested can challenge a patented invention by filing a post grant opposition. Any person interested or the Central Government or the alleged infringer (defendant) in an infringement suit can also file a revocation petition to challenge the validity of a patent. A patent application can be opposed by any person before its grant.
Designs: Any person interested may file a petition for cancellation for the registered design before the Indian Patent Office.
Copyright: There is no provision to challenge the registration of copyright before the grant. A person can however file an infringement suit or action for passing off in case there is a violation of his copyright by the registration or use of any such copyright.
Trade mark: Any person can oppose a trademark application. Further, any aggrieved person may make an application in the prescribed manner to the Intellectual Property Board (IPAB) or to the Registrar to cancel or vary the registration of a trade mark on the specific ground.
Geographical indications: Any person may, on application made to the Registrar in such manner and on payment of such fee as may be prescribed, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration of the GI. Any aggrieved person may make an application to the Appellate Board praying for cancelling or varying the registration of a Geographical Indication or authorised user on specified grounds.
Any person establishing legitimate interest may challenge the IP rights described in Section A. Most commonly, such person will be a competitor.
Any party can file with the JPO an opposition to a granted patent within 6 months after issuance of the official gazette in which the patent is published. Only interested parties can file for an invalidation trial at the JPO at any time.
Any party can file with the JPO an opposition to a patent registration within 2 months after issuance of the official gazette in which the trade mark is published. Only interested parties can file for an invalidation trial at the JPO at any time.
Utility model rights and Design Rights
Any party can file for an invalidation trial at the JPO at any time.
Any third party that proves its legal standing to challenge the intellectual property right. The legal standing can be proven –among other scenarios- by means of any prior intellectual property right considered affected because of the existence of the right to be challenged.
Any individual, corporation or organisation can challenge these rights, but an interest is required in order to challenge trademarks.
A challenge against an IP right may be brought by anyone, however, challenges are typically brought by: (i) an entity seeking to clear the way of the IP right before bringing its own goods or services to a market, (ii) an entity already selling potentially infringing goods or services, which is concerned about infringement, and (iii) an entity accused of infringing the right in question.
Patents and Designs
Any person may apply for revocation of a patent or design registration.
Plant Breeders’ Rights
Any person may object to the grant of a PBR.
Any “interested person” may challenge a trade mark registration and this has been held by the courts to mean any person with a genuine and legitimate competitive interest in the trade to which the trade mark relates.
Who can challenge?
any person who has an interest
any concerned person
a concerned person
It is therefore necessary for any party looking to challenge one of these rights, to ensure that they can prove that they are an "interested person" or a "concerned person" as without such proof, the challenge will fail.
For trademarks, any person who believes he would be damaged by the registration of a mark may file an opposition to the trademark application within the prescribed period for opposition.
For patents, any interested person may petition to cancel the patent or any claim thereof, or parts of the claim, on the ground that the claimed invention is not new or patentable; that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or that the patent is contrary to public order or morality.
In federal court, defendants who have been sued for patent infringement can challenge infringement as well as the validity of the asserted patent. However, anyone can challenge the validity of a patent at the Patent Trial and Appeal Board (PTAB). A third party can file petition with the PTAB for inter partes review of a particular patent and submit evidence that the patent is invalid. With regard to trademarks, Defendants to a complaint alleging trademark infringement can challenge the validity of the trademark registration asserted. And a third party can file a petition for an inter partes opposition, cancellation, or concurrent use proceeding at the Trademark Trial and Appeal Board (TTAB). Defendants named in a copyright infringement complaint filed in federal court can challenge the validity of a federal copyright registration.
Owners of prior rights based on these. Anyone can file for cancellation claiming that the IP rights is not eligible for protection.
Anybody with a legal interest can challenge the intellectual property rights described in section A.
Intellectual property rights can be challenged by any third party (subject to procedures as prescribed by the relevant laws).
In case the intellectual property rights are challenged at the courts, the plaintiff has to prove that his rights and / or legal interests are being infringed by existence of the disputed intellectual property object.
Upon the announcement of any trademark application, third persons may inform the Authority in writing of their opinions as to the claim that the application should not be registered owing to absolute grounds for refusal. Also, the relevant persons should file a written objection along with the applicable objections to the Authority as to the claim that the application should not be registered owing to absolute and/or relative grounds for refusal. The persons who can file an objection to the registration of trademark applications shall be the owner of the relevant trademark, owner of mark and owner of the previous trademark as provided in the justifications for the relative rejection constituting the basis for the objection. Third persons or the owner of any previous right may file an objection claiming that the registration application for geographical indications and traditional product names does not fulfil the requirements for the application. Third persons may also file a written objection claiming that the design and patent should not be registered by depositing the relevant objection fee and submitting the documentary proof for payment to the Authority.
As several of the intellectual property rights are not registered under Swedish law these cannot be challenged other than as an objection in an ongoing infringement proceeding or a proceeding on non-infringement. This section will therefore only discuss challenges to registered intellectual property rights.
Trademarks and trade names
Regarding trademarks and trade names it is possible to challenge them both during the registration process as well as during its subsistence. As mentioned under section F, the same criteria to challenge applies for both trademarks and trade names but in the following focus has been put on trademarks.
Anyone can challenge a trademark registration. Firstly, it is possible to object against an application to register a trademark. This could only be done within six months from when the application was filed with the patent and registrations office.
If the objection period has passed and the application is granted one who wishes to challenge the trademark must file an action to revoke the registration. In summary, the grounds for revocation of a trademark are (i) the mark has been registered in violation of the Trademark Act and the registration continues to violate the Act (ii) as a result of the proprietor’s acts or passivity, the trademark has become generic for the goods or services to which the registration pertains (iii) the trademark has come to violate a law or other statutory instrument, standard practice, or the public order, (iv) the trademark has been intended to mislead the general public in respect of the nature, quality, geographic origin of the goods or service, or other circumstance in respect of the goods or service, and this is a result of the use made of the trademark for the registered goods or services by the proprietor or any person acting with his or her consent, (v) the proprietor has not made actual use of the mark in Sweden for the goods or services for which it is registered for a period of five years from the date on which the question of registration was conclusively resolved, or within a period of five consecutive years.
An application to revoke a registration should be filed with the patent and registrations office. If the holder of the registration does not object to the claim the authority will revoke it. If the owner of the registration objects to the claim the applicant will be given the opportunity to choose whether to proceed with the claim. If the applicant chooses to maintain his claim the case will be forwarded to the patent and market court where the proceedings will continue.
Patents can be challenged both during the registration process as well as after a grant. Both challenges are available to anyone.
During the registration process objections can be made towards a patent once the patent and registrations office has considered that an application meets the formal criteria. This is followed by a notice to grant the patent from the authority. Once the notice to grant the patent has been made public, a period of nine months follows where others than the applicant are given the opportunity the objection.
A patent can also be challenged once the objection period has ended. In such case, an action to declare the patent invalid must be filed with the patent and market court.
In order to succeed with an invalidity claim the court must find that (i) the patent does not meet the requirements for grant, (ii) insufficient disclosure of the invention, (iii) lack of support in the application as filed or (iv) expansion of the scope after it was granted.
The court could also partially invalidate a patent but cannot transform it into a utility model since the concept of utility models is not available in Sweden.
As with other registered intellectual property rights it is possible to challenge a registered design both during the initial application procedure and when it has been registered.
If the patent and registrations office does not find any obstacle to an application, the design shall be entered into the register and a notice to that effect be published. Once the notice is published an objection can be made within two months from the publication date.
The right to object to an application to register a design is rather detailed but can be briefly summarized as follows. An objection may be filed only by (i) any person who considers himself or herself entitled to the design, (ii) any person who applies for or is the holder of the right, if the objection is based on an obstacle to the design right pursuant to section or (iii) anyone who is affected by the right.
An action to declare a registration invalid must be filed with the patent and market court within one year from the time when the claimant learned of the registration and the other circumstances on which the action is based. Where the design holder was in good faith when the design was registered or when the design right was transferred to him or her, an action may not be brought more than three years from the registration. An action to declare the registration invalid can be made by anyone that meets the criteria to object to an application.
A claim for revocation could be based on the ground that the application did not meet the required criteria at the time of the registration. Such claim could include an argument that the design is (i) dictated solely by the technical function of that product; or (ii) must necessarily be reproduced in their exact form and dimensions in order to permit the product to which the design is applied to be mechanically connected to or placed in, around or against another product so that both products can perform their functions.
Registered plant varieties
A challenge to a registered plant variety could be made both during the registration process and once an application has been granted.
If the application documents are complete and there is no impediment to the registration, the Swedish Board of Agriculture which is the authority that handles such applications will publish a notice of the application in order to give the public an opportunity to object to the application. An objection to an application must be made within two months from the authority’s notice.
An action to revoke a granted registration should be filed with the patent and market court. Such action can be based on the grounds that the plant variety did not meet the criteria for registration at the time it was registered. In brief the requisites for registration are novelty, distinctiveness, uniformity with respect to its essential characteristics and stability.
PATENTS & UTILITY MODELS:
Patents expiry 20 years from the day of its application. Utility Models expiry 10 years from the day of its application. Such registrations can also expiry if surrendered by its registered owner (unless third parties’ rights are affected).
Patents and Utility Models may be also cancelled by civil courts at the request of any natural or legal person or any association legally constituted for the representation of the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest.
A trademark may be cancelled by the SPTO if it is not duly renewed or if it is surrendered by the owner unless the surrender may affect the rights of third parties (e.g. where the rights are subject to licences, attachments or call options).
A trademark may be also cancelled by civil courts at the request of any natural or legal person or any association legally constituted for the representation of the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest.
A trademark may be declared invalid on the basis of nullity absolute grounds at the request of the SPTO or any natural or legal person or any association legally constituted for the representation of the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest.
A trademark may be declared invalid on the basis of nullity relative grounds at the request of the holders of the earlier rights affected by the registration of the mark, or their successors in title.
A design may be cancelled by the SPTO if it is not duly renewed or if it is surrendered by the owner unless the surrender may affect the rights of third parties (e.g. where the rights are subject to licences, attachments or call options) or if there is an ongoing claim action on the design´s ownership and the claimant has not consented the surrender.
A design may be also cancelled by civil courts at the request of a third party when the design´s holder is no longer entitled to own the registered design.
Any natural or legal person, as well as any group legally constituted to represent the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest, may request the invalidity of a registered design alleging:
- That what is requested as a design does not conform to what is defined as such by law;
- That the design does not comply with any of the legal requirements for protection.
However, only the holders of the right on which annulment proceedings are based can request the invalidity of a design alleging:
- That it has been declared by a final judicial decision that the design holder does not have the right to obtain the design registration;
- that the registered design is incompatible with a design protected in Spain by virtue of a request or registration with a prior date of presentation or priority, but which has only been made accessible to the public after the date of presentation or priority of the later design;
- That the registered design implies an improper use of any of the elements listed in Article 6 ter of the Paris Convention or of distinctive emblems and emblems other than those referred to in Article 6 ter which are of public interest such as the emblem, flag and other emblems of Spain, its autonomous communities, Its municipalities, provinces or other local entities, unless it has the proper authorization.
- That the registered design incorporates a trademark or other distinctive sign previously protected in Spain whose owner is entitled, by virtue of such protection, to prohibit the use of the sign in the registered design;
- That the registered design implies an unauthorized use of a work protected in Spain by copyright;
Copyrights expiry 70 from the death of its author (there are specific durations for related rights).
There are no specific proceedings aiming the invalidation or cancellation of a copyright.
There are no specific proceedings aiming the invalidation or cancellation of a copyright. However, in the course of a copyright infringement case, defendant can argue that the claimant’s work is not copyrightable (i.e. on the grounds of lack of originality).
The opposition procedure in Israel is a pre-grant procedure. The period of opposition is 3 months from the publication on an intent of grant. Such an opposition may be submitted by any third party. Due to the pre-grant procedure, applicant is not able to initiate a patent infringement action during the opposition procedure.
Cancellation of a granted patent may be submitted at any time as long as the patent is in force. Cancellation can be filed by any party, including the patent holder.
There are no oppositions to design registration.
During the claim – the defendant may claim that the plaintiff does not own the rights or did not create the allegedly infringing work. It is also possible to submit a motion for declarative relief.
Any person and/or legal entity can file an opposition, provided there are grounds to do so. Israeli opponents do not have to be represented by an attorney, but foreign opponents need to work with a local counsel.
The same apply on cancellation proceedings of a 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.
In regards 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.