Recently, the Beijing Intellectual Property Court has announced a new measure to adjust the filing procedures for trademark administrative litigation, especially on trademark review of refusal cases. Currently, there are numerous cases where the CNIPA (as the defendant) lost lawsuits due to changes in circumstances. Both the CNIPA and the Court have implemented measures to avoid further litigations caused due to such changes in circumstances. For example, in June, the CNIPA has issued regulations on suspending examination of review cases. Now, the Beijing Intellectual Property Court has also adjusted the filing procedures for trademark administrative litigation case and set a maximum extension of 12 months for formally filing litigation. Generally speaking, within this period, cases awaiting decisions on cited trademarks will have a result. If there are changes in circumstances during this period, the court can require the applicant to withdraw the lawsuit and ask CNIPA to re-make a new decision. The specific provisions are as follows:
1) For the administrative litigation on trademark review of refusal cases, if the status of the cited mark is not stable, when filing the pleading before the initial deadline, the applicant can request an extension of 12 months for submitting the required documents to officially file the case in Court. No further extension of time is available. The prerequisite is that, cited trademarks are already in the unstable status before the sued decision on the case is made by CNIPA, and the final conclusion of the cited trademarks is sufficient to have a substantial impact on the trial of the case. Preliminary evidence of the unstable status of the cited trademarks should be submitted along with an explanation of its potential impact on the case when we file such time extension request.
2) For any other administrative litigation cases, if the involved party is from other countries or from Hong Kong, Macau, or Taiwan of China, when filing the pleading before the initial deadline, the applicant can request an extension of 3 months for submitting the required documents to officially file the case in Court (that is, the applicant will totally have 6 months to prepare and complete the notarization and legalization of required documents). No further extension of time is available.
The above-mentioned changes on procedures have the following impact on the administrative litigation cases concerning trademarks in China:
The foreign entities can submit the lawsuit for the first time, along with the time extension request if:
a. it is difficult for the client to complete the notarization and legalization of required documents to formally file the case in Court. In such case, we can extend the period from the previous 3 months to the longest 6 months;
b. the status of cited marks is not stable (such as pending examination of cancellation, opposition, invalidation, name/address change, ownership change, etc.) in litigation on trademark review of refusal cases. In such case, we extend the period for submitting the notarized and legalized documents from the previous 3 months to the longest 12 months.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
