New Regulations for Suspension of Trademark Review Cases in China

by Nina Li, Partner, Trademark Attorney

Recent years, with the acceleration of the examination speed of various cases by the CNIPA, while it is possible for applicants to obtain registered rights on their trademarks faster than years ago, problems also arise because the trademark applicants have to submit and pursue unnecessary cases from time to time due to the lack of coordination between various case procedures. Two weeks ago, the National Intellectual Property Administration of the People's Republic of China (CNIPA) published specific conditions under which trademark cases can be suspended. It is great news for trademark applicants who are facing prosecution problems in the less coordinated trademark registration procedures in China.

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Recently, the CNIPA printed and distributed an internal working document about the working system for review and trial of trademark review cases. The regulation document is internal, it won’t be published. However, as it contains a specific part which is about suspension of review cases, interpretation of the specific conditions and regulations about the suspension on cases has been published by the CNIPA. ?

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Suspension shall be based on the principle of necessity. According to the published content, the case shall only be suspended if, during the examination on the case, the determination of prior rights or other circumstances has a substantial impact on the outcome of the case. The case should not be suspended, if other reasons for evaluation or other rights determined by the prior trademark are sufficient to determine the case.

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The regulations stipulate the following seven situations under which the case should be suspended:

1.?????The disputed trademark or cited trademark is in the process of changing or transferring the registrant's name, and there is no longer a conflict of rights after the change or transfer;

2.?????The validity period of the cited trademark has expired and it is in the process of renewal or in grace period for renewal;

3.?????The cited trademark is in the process of cancellation or withdrawal;

4.?????If when the case is examined, the cited trademark is cancelled or declared invalid, or is not renewed upon the expiry of its validity period and it is still in the one-year isolation period as stipulated by the Article 50 of the Trademark Law. However, there is no need to suspend the case if the reason for provisional refusal doesn’t involve Article 50 of the Trademark Law. Furthermore, if the cited mark is cancelled because of non-use, the provisions on the isolation period shall no longer apply from the publication date of the cancellation.

5.?????The case involving the cited trademark has already had a conclusion and is waiting for it to take effect or the effective judgment is executed and is waiting for a new adjudication.

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These five situations under which the case should be suspended are commonly applicable to appeal against provisional refusal, appeal against disapproval of registration and invalidation cases.

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6.?????The prior rights must be based on the outcome of another case being heard by a people's court or handled by an administrative organ.

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Such situation is specifically applicable to appeal against disapproval of registration and invalidation cases.

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7.?????The right status of the cited trademark must be based on the results of another case being heard by the people's court or handled by the administrative organ, and the applicant clearly requests to suspend the case.

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Such situation is specifically applicable to cases of appeal against provisional refusal.

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Since the above seven situations are now stipulated as specific situations that should be suspended, examiners’ discretionary room has been greatly reduced. In future practice, the progress of cases under such situations will be more predictable to the party. Accordingly, related unnecessary cases that have to be raised in current practice will be avoided.

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The regulations also stipulate three situations under which the case can be suspended depending on the specific circumstances of the case.

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8.?????In appeal case against provisional refusal, if invalidation has already been requested against the cited trademark and its registrant in other cases has been determined to constitute malicious registration situations as stipulated in Article 4, Article 19.4, and Article 44.1 of the Trademark Law, the case may be suspended when the examiner deem necessary. The difference between this situation and the above situation (7) is that it does not require the applicant to submit a suspension application. The examiner can independently decide whether to suspend the application based on the specific case, thereby effectively reduce the plagues caused by malicious registration of trademarks to legitimate rights owners, such as repeated applications and exhaustion of legal procedures.

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9.?????If it is necessary to wait for the result of another case to be ruled or judged beforehand which is in the same situation or is relevant, the case may be suspended if necessary. This situation does not necessarily involve cited trademark, and therefore does not require the applicant to submit a suspension request. However, in order to coordinate the various procedures for trademark right granting and verification, as well as administrative and judicial procedures, unify review and trial standards, avoid procedure cycles caused by conflicting conclusions, and effectively reduce the burden on the parties, the examiner can independently decide whether to suspend based on the specific circumstances of the case.

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10.??Other situations where the case can be suspended. For situations that are not included in the above situations, based on the principles of necessity and in favor of legitimate right owners, and consulting the above situations, the examiner can independently decide whether to suspend the case based on the specific circumstances of the case.

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In the above three items of situations, the examiners’ discretion on whether to suspend the case has been maintained. However, taking the back ground and purposes of making the regulations into consideration and as the first seven specific situations, under which the case should be suspended, can be used as references, it can be reasonably expected that in future cases suspension will become more practical when the applicant is able to show the necessity.

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According to the published content, for appeal case against provisional refusal, the applicant should file an explicit request in written to request for the suspension on the case and such request should be filed before the end of the three-month supplementary period. After the status of the cited trademark is determined, the applicant who applied the suspension, shall submit corresponding evidence materials requesting the examiners to resume the examination on the case.

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In fact, in the Chinese Trademark Law and Regulations for the Implementation of the Trademark Law, there are provisions concerning the suspension of cases. However, due to all kinds of reasons such as the large and increasing number of all kinds of cases, the pursuit of examination speed on cases, and lack of coordination between various case procedures, it usually was difficult to successfully request for suspension on a case thus brought considerable burden to both the applicant and public resources. With the new regulations made by the CNIPA, the applicant’s situation will change.?