Weekly China Trademark News Updates

June 14, 2023

The Standards for Suspension of Trademark Review and Adjudication 

The CNIPA recently released the Standards for Suspension of Trademark Review and Adjudication (the “Standards”) that lists the circumstances to grant a suspension for a pending trademark review case.

The Standards states that the precondition of a suspension is the petitioner’s filing of a suspension request, except where the examiner suspends the review at his discretion based on that a cited mark is suspected of being registered in bad faith. The necessary condition to resume the review is subject to the petitioner’s submission of corresponding evidence proving that the cited mark’s status has been confirmed.

There are seven express circumstances to suspend a case and three case-by-case scenarios where suspension can be considered.

The seven circumstances are:

(1) The disputed mark or the cited mark is in the proceeding of name change of registrant or an assignment, and there will be no conflict of rights between the disputed mark and the cited mark after the name change or assignment;

(2) The cited mark has expired and is in the process of renewal or in the grace period for renewal;

(3) The cited mark is in the revocation or withdrawal proceeding;

(4) Where the cited mark has been revoked, invalidated or not renewed upon expiry, the review is within one year from the date the cited mark is published as valid or expired. If, however, the rejection is not based on the one-year isolation period under Article 50 of the Trademark Law, the case does not need to be suspended.

(5) The case involving the cited mark has been concluded and is waiting for the conclusion to become effective, or the enforcement of the effective judgment is pending for re-adjudication.

(6) The prior rights involved must be based on the results of another case that is pending in a court or the CNIPA;

(7) The status of the cited mark involved must be based on the result of another case that is pending in a court or the CNIPA, and the petitioner must explicitly file a suspension request;

Among the seven express circumstances, Circumstances (1) to (5) can be generally applied in rejection appeals, registration disapproval appeals, and invalidations. Circumstance (6) is specifically applicable to registration disapproval appeals and invalidations, while Circumstance (7) is specifically applicable to rejection appeal.

The three case-by-case scenarios that cases can be suspended are:

(8) A case can be suspended where the cited mark involved in a rejection appeal is pending in an invalidation proceeding, and the cited mark’s registrant has been identified in other cases as constituting bad faith registration under Article 4, Article 19(4), and Article 44(1) the Trademark Law. This scenario does not require the petitioner to file a suspension request. Examiners have discretion to decide whether to suspend based on the facts of the case, which will effectively reduce the right holders’ troubles of filing repeated applications and exhausting legal proceedings caused by bad faith registrations;

(9) A case can be suspended in a case-by-case scenario if it is necessary to wait for a case that shares identical facts, or a relevant case to be ruled or adjudicated. This scenario does not necessarily involve a cited mark, so a petitioner is not required to file a suspension request. However, to better coordinate administrative rights confirmation proceeding, other administrative proceedings, judicial proceedings, unify review and trial standards, avoid proceeding loopholes caused by conflicting decisions, and effectively reduce the parties’ burden, examiners have discretion to decide whether to suspend a case according to the specific circumstances of the case; and

(10) Other situations in which a case can be suspended. For cases that fall short of fully exhaust all proceedings, the principle of necessity and the benefit to the right holder shall be taken into consideration. With reference to the said scenarios, examiners have discretion to decide whether to suspend a case according to the specific circumstances of the case.

To ensure right holders’ interests, while considering efficiency, fairness, and stability of trademark registration order, a suspension request should be filed within the specified time limit. A petitioner for a rejection appeal should supplement at least within three months of the filing date of rejection appeal with a written statement stating the actions taken to remove the obstacles blocking the cited mark. The petitioner may also put forward an explicit suspension request as stated in Circumstances (7) together with the reasons for rejection appeal. The suspension request shall state the cited mark’s registration number, the proceeding it is in, and the relationship with this case, and other conditions. In principle, whoever applies for the suspension shall apply for lifting the suspension. After the cited mark’s status is confirmed, the petitioner shall submit the corresponding evidence, and the examiner shall resume the review if the examiner receives the petitioner’s supplemental evidence and confirms that the circumstances for the suspension has been eliminated.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China