Trademark applicants in China whose applications have been refused in examination will often seek to oppose, invalidate or cancel cited trademarks while simultaneously pursuing a review of the refusal as part of the examination process. If the examination process continues without suspension, applicants are compelled to assert their rights through legal procedures, including appeals before Chinese courts, or by filing fresh applications.
Presently, requests for suspension of examination are rarely granted, with the result that obtaining trademark protection in China can be both lengthy and costly. Clear guidance on suspension procedures has been long over due. However, there is good news for trademark applicants.
On June 13, 2023, the China National Intellectual Property Administration (CNIPA) introduced the "Regulation on Suspension of Trademark Procedures" which seeks to alleviate the burden on applicants arising from multiple trademark filings and repeated court appeals in their pursuit of trademark protection. The regulation provides specific guidance on seven mandatory suspension circumstances and three discretionary suspension circumstances.
The regulation is founded on the principle of necessity. Cases will be suspended only when the circumstances involve the determination of prior rights. Suspension will not be granted where the examiner has objected to registration on absolute grounds or where the applicant is arguing that the marks at issue are dissimilar.
Seven mandatory suspension circumstances
The following table sets forth the circumstances where suspension is mandatory and the applicable case types:
|
No. |
Mandatory suspension circumstances |
Types of cases |
|---|---|---|
|
1 |
Disputed trademark or cited trademark is undergoing name change or assignment, and the change/transfer resolves conflicts. |
Review of refusal, Review of opposition, Invalidation action |
|
2 |
Cited trademark has expired and is in the renewal grace period. |
Same as above |
|
3 |
Cited trademark is in revocation or withdrawal proceedings. |
Same as above |
|
4 |
Cited trademark cancelled/invalidated or unrenewed for under a year. |
Same as above |
|
5 |
Case involving cited mark concluded, awaiting effect or enforcement. |
Same as above |
|
6 |
Prior rights depend on the outcome of another ongoing case. |
Review of opposition, invalidation action |
|
7 |
Awaiting the outcome of another case in which the cited mark has been challenged and the applicant explicitly requests suspension. |
Review of refusal |
The Examiner must suspend examination when these circumstances
apply. Indeed, the Examiner may suspend examination on his / her
own initiative when the first six circumstance apply. However,
circumstance seven requires a specific request for suspension by
the applicant (the requirements for a suspension request are noted
below).
Three discretionary suspension circumstances
The following table sets forth the circumstances in which suspension is discretionary and their applicable case types:
|
No. |
Discretionary suspension circumstances |
Types of cases |
|---|---|---|
|
1 |
Cited trademark in refusal review faces invalidation due to bad faith filings |
Review of refusal |
|
2 |
Awaiting decision on similar or related cases |
Review of refusal |
|
3 |
Other situations warranting suspension |
Review of opposition, invalidation action |
In these scenarios, the applicant can request suspension but the
examiner has the discretion to suspend trademark procedures without
requiring an applicant's request.
Principles and procedures for requesting suspension
The regulation sets forth time limit prerequisites and suspension application procedures. It also sets for the procedures for resuming examination proceedings.
Where the applicant submits a request for suspension, the request must be made during the refusal review phase (and not later than the three-month supplementary submission period) and provide a written and detailed account of actions taken against the cited mark.
Generally, the applicant is responsible for lifting the suspension. Examination proceedings will recommence once the examiner receives the applicant's submissions and evidence verifying the cited mark's final status.
Conclusion
The regulation provides welcome and much-needed clarity and will reduce the time and costs incurred by applicants in acquiring trademark rights in China.
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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.
