In order to effectively resolve longstanding practical issues - such as the lack of coordination between various administrative procedures for trademark authorization and confirmation, as well as between administrative and judicial procedures, which often leads to issues such as circumstance changes, procedural idling, or cases giving rise to further cases - and to reduce the burden on trademark holders who, in order to remove obstacles posed by cited trademarks, often face repeated filings and exhaustion of legal procedures due to subsequent prior applications by others, thereby incurring unnecessary time and financial costs, the China National Intellectual Property Administration (CNIPA) Trademark Office recently issued the Interpretation of the Guidelines on Suspension of Trademark Review Cases. The Guidelines clearly sets out the principle for suspending trademark review cases, specify seven situations where suspension is mandatory, and three situations where suspension may be considered depending on the specific case, with the aim of facilitating flexible operation of the trademark review procedures.
I. Principle of Suspension
The suspension of proceedings shall follow the principle of necessity. Cases shall only be suspended when the determination of prior rights or similar circumstances would have a substantive impact on the outcome of the case. Where other grounds for review or the status of other prior trademarks are sufficient to determine the outcome of the case, the review shall not be suspended.
II. Situations for Suspension
1. Situations Where Suspension Is Mandatory
1.1 Five situations where suspension is mandatory and applicable to cases of review on refusal cases, review of opposition, and invalidation proceedings:
(1) The disputed or cited trademark is undergoing a change of registrant or transfer process, and there will no longer be a conflict of rights between the disputed mark and the cited mark after the change or transfer;
(2) The validity period of the cited mark has expired, while the cited mark is still in the renewal procedure or within the grace period for renewal;
(3) The cited mark is in the cancellation or withdrawal application procedure;
(4) The cited mark has been cancelled, declared invalid, or has not been renewed upon expiry of the period of validity, 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 suspension; according to the "Trademark Examination and Trial Guide," if a cited trademark is cancelled due to non-use for three consecutive years, it shall be handled in accordance with the Guide;
(5) A case related to the cited mark has been decided and is waiting for the decision to take effect, or the enforcement of the effective judgment is pending the re-issuance of a new decision;
1.2 Situations where suspension is mandatory and specifically applicable to review of opposition and invalidation proceedings:
(6) Where the prior rights concerned must be based on the outcome of another case being heard by the court or being dealt with by the administration department；
1.3 Situations where suspension is mandatory and specifically applicable to review on refusal:
(7) Where the status of the cited mark must be based on the outcome of another case being heard by the court or being dealt with by the administrative department, and where the applicant has explicitly requested suspension. In principle, the party requesting suspension shall be the one to request the lifting of the suspension. Once the status of the cited trademark has been determined, the applicant shall submit corresponding evidence materials. Upon receipt of the applicant’s supplementary evidence and confirmation that the grounds for suspension no longer exist, the examiner shall resume the review.
2. Situations where suspension is optional
(8) A trademark refusal review case may be suspended under the circumstance where the cited mark is pending an Invalidation and the registrant of cited mark has, in other cases, been found to have filed a malicious trademark application not for the purpose of use (specified in Article 4 of the Trademark Law), or the trademark agency has unlawfully applied for registration of other trademarks (specified in Article 19(4) of the Trademark Law), or where the mark cannot be used or registered as a trademark or has been obtained by fraud or other improper means (specified in Article 44(1) of the Trademark Law), and other circumstances indicating malicious registration. The difference between this situation and the aforementioned situation (7) is that it is not dependent on an applicant’s request for suspension, and the examiner may suspend the case at his/her own discretion based on the specific circumstances of the case.
(9) In cases where it is necessary to wait for a ruling or judgment in a similar or related case, the proceedings can be suspended based on individual case needs; this situation may not necessarily involve a cited mark and therefore is not dependent on an application for suspension. However, in order to coordinate the various administrative procedures related to trademark authorization and confirmation, as well as to coordinate administrative and judicial procedures, unify examination and trial standards, and avoid procedural loops resulting from contradictory conclusions, and to effectively reduce the burden on parties involved, the examiner may suspend the case at his/her own discretion based on the specific circumstances.
(10) Other situations where the proceedings can be suspended, if there are unresolved issues, the principles of necessity and benefiting legitimate rights holders can guide the examiner in at his/her own discretion deciding whether to suspend the proceedings, taking the above-mentioned situations as a reference and considering the specific circumstances of the case.
The Guidelines will help fully leverage the role of administrative procedures in resolving disputes, effectively optimize the allocation of administrative and judicial resources, and reduce the administrative and litigation burdens on legitimate rights holders in trademark authorization and confirmation procedures. We will also actively incorporate these latest Guidelines into our practice to better safeguard your trademark protection.
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/litigation/legal matters, please send to info@bhtdlaw.com.
