Guides to Stay Trademark Review Cases
Recently, the Trademark Office of the CNIPA issued the guides to stay trademark review cases, which outlines seven specific situations for mandatory stay and three situations for optional stay, aiming to facilitate flexible operation in trademark review procedures.
I. Situations for mandatory stay
1.1 Five situations for mandatory stay, applicable to cases of refusal review, opposition review, and invalidation proceedings:
1) The disputed or cited trademark is undergoing a change of registrant or transfer process, and such change or transfer will result in no rights conflict with the disputed mark or the cited mark;
(2) The cited trademark has expired and is in the renewal process or the grace period for the renewal;
3) The cited mark is in the removal from the register or withdrawal application procedure;
4) The cited mark has been cancelled, declared invalid, or has not been renewed upon expiry of the term, and the date of cancellation, invalidation or removal has not reached one year; it should be noted that if the refusal grounds do not involve Article 50 of the Trademark Law, there is no need for stay; according to the "Trademark Examination and Review Guides," if a cited trademark is cancelled due to non-use for three consecutive years, it shall be handled in accordance with the Guides;
5) A case related to the cited mark has been concluded a decision and is waiting for the decision to take effect, or its effective judgment is waiting for re-adjudication;
1.2 One situation for mandatory stay, applicable to cases of opposition review and invalidation proceedings:
6) Where the prior rights concerned must be based on the outcome of another case being tried by the court or being dealt with by the administration department；
1.3 One situation for mandatory stay, applicable to cases of review on refusal:
7) Where the status of the cited mark must be based on the outcome of another case being tried by the court or being dealt with by the administrative department, and where the applicant has explicitly requested for a stay.
II. Situations for optional stay
8) a cited mark involved Review on Refusal has be requested for invalidation, and the registrant of the cited mark has been found of bad faith in registering trademarks under Article 4, Article 19(4), and Article 44(1) of the Trademark Law in other cases; the difference between this situation and the aforementioned situation 7) is that it does not require a request to stay, and the examiner may stay the case at his/her own discretion based on the specific circumstances, thereby effectively reducing repetitive applications and exhaustion of legal proceedings caused by maliciously trademark registrations to legitimate rights holders.
9) In cases where it is necessary to wait for a ruling or judgment in a similar or related case, the proceedings can be stayed based on the needs in a particular case; this situation may not necessarily involve a cited mark, and therefore does not require a request to stay. However, the examiner may stay the case at his/her own discretion based on the specific circumstances in order to coordinate the various administrative procedures related to trademark registering and confirmation, as well as to harmonize administrative and judicial procedures, unify examination and trial standards, and avoid procedural cycles resulting from contradictory conclusions, and to effectively reduce the burden on parties involved.
10) Other situations for optional stay: for the other unlisted situations, the examiner in at his/her own discretion can decide whether to stay according to the specific circumstances of the case in the principles of necessity and benefiting legitimate rights holders and taking the above-mentioned situations as a reference.
It should be noted that only situations in which the determination of prior rights has a substantial impact on the outcome of the proceedings will lead to stay. If there are other grounds for review or other cited marks with determined status that are conclusive to the final decision, the proceedings will not be stayed.
The formulation and implementation of this regulation can effectively address the lack of coordination among the various administrative procedures related to trademark right registering and confirmation, as well as between administrative and judicial procedures. It resolves long-standing issues such as changing circumstances, procedural inaction, and generating new cases based on existing ones that have plagued practice. Additionally, it reduces the burden on trademark owners who repeatedly apply and exhaust legal procedures to avoid obstacles from cited trademarks and subsequent prior applications by others. It also mitigates the unnecessary institutional costs associated with acquiring trademark rights and provides timely and effective protection for the legitimate interests of trademark owners.
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