Authors: Mandy Liu and Robert Zang, Senior Trade Mark Attorney at strategic partner, Lusheng Law Firm
Many applicants have had their trade mark applications refused due to the existence of similar prior marks on similar goods. To overcome a citation, filing an appeal against the refusal with a suspension request and removing the citations is the usual course of action. However, due to the uncertainties in securing a suspension of the appeal, the applicant typically has to file rounds of appeals and new applications whilst awaiting the results of actions against the citations. This has the potential to be time-consuming and costly. The CNIPA recently released new rules that aim to resolve this issue.
According to the current Trade Mark Law, a “suspension may be granted” if the status of the prior right is uncertain and dependent on the result of another case under review by a court or being processed by an administrative authority. Essentially, examiners will decide whether to grant a suspension at their discretion. But in practice, the examiners are normally reluctant to grant a suspension for the sake of “efficiency”. This practice has significantly increased the burden on brand owners who may have to refile applications or go through court appeal proceedings while awaiting a final determination on the status of the citations.
To reduce brand owners’ burden, the CNIPA issued new rules for the Suspension in Trade Mark Review Cases and released its interpretation on the new rules on 13 June, 2023 on its official website[1]. According to the new rules, a suspension will be granted based on the principle of necessity, and the review will only be suspended if the results of the relevant cases have a substantive impact on the review cases. The most significant change is that the new rules provide seven scenarios where examiners “shall” grant suspension vs. “may” grant. There are also three scenarios where examiners “may grant suspension” in the new rules which give the examiner a certain degree of discretion to suspend the review according to the specific circumstances of the case. In addition, the new rules also provide clear guidance on the timing, contents and formalities for suspension requests.
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Scenarios where examiners shall suspend |
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1. |
The disputed trade mark or cited trade mark is in the process of a name change or assignment, which can eliminate a conflict. |
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2. |
The cited trade mark has expired and is being renewed or in the grace period. |
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3. |
The cited trade mark is being withdrawn. |
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4. |
The cited trade mark is cancelled, invalidated, or has not been renewed within 1 year. |
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5. |
The case where the action against the cited trade mark has been concluded and is waiting for the decision to take effect or is waiting for the re-issuance of the decision based on the effective judgment. |
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6. |
The status of the prior right is uncertain and dependent on the result of another case that is being reviewed by a court or being processed by an administrative authority. |
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7. |
The status of the cited mark is uncertain and dependent on the result of another case under review by a court or being processed by an administrative authority, and the applicant clearly requests to suspend the review.
Note: Although not clearly explained by the CNIPA, the unstable status of a cited mark mentioned here should cover the scenarios that the cited mark is pending opposition, invalidation, non-use cancellation or any related proceedings. |
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Scenarios where the examiners may suspend |
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8. |
The cited trade mark involved in a Refusal Appeal is subject to invalidation on the basis of bad faith, and the bad faith of the cited trade mark owner has been confirmed in a prior case. |
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9. |
Earlier cases of similar situation or of relevance are awaiting a ruling or judgment, on a case-by-case basis. |
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10. |
Other situations that the examiner may grant suspension as necessary. |
This is a very positive development in Chinese trade mark practice, and exemplifies the CNIPA’s change of attitude towards suspension requests. Although these rules are more akin to an internal guidance for examiners rather than formal regulations or laws, they have been released to guide examiners and parties involved in review cases to understand when and how to apply them. With the progress of the fifth amendment to the Trade Mark Law, these changes may also be incorporated into the new amendment to relieve brand owners’ concerns about the prohibition of repeated trade mark filings.
Since the new rules have just been released, brand owners should still consider back-up applications to secure their position if the application is of importance before the situation becomes clearer. If the examiners strictly follow the new rules, there will be significant savings on time and resources for brand owners. We will monitor practice changes and provide more updates.
Meanwhile, it is advisable that the applicant should actively submit a written suspension request stating the actions that have been taken to remove prior obstacles and the developments of these actions to assist the examiner to better understand the background and developments of the case so that the examiner can suspend or resume review of the case in time.
[1] https://sbj.cnipa.gov.cn/sbj/ssbj_gzdt/202306/t20230613_27700.html