On June 13, 2023, China's National Intellectual Property Administration (CNIPA) issued an Interpretation of Guidance for Suspending Review Cases. This means that brand owners will more easily be able to suspend decisions in some trademark cases until the status of the marks involved is determined in other related cases. This is good news as it effectively reduces certain timeline and administrative burdens on legitimate rights holders in trademark prosecution.

In the past, brand owners often found themselves needing to endlessly file backup trademark applications or developing backup strategies for their China trademarks when CNIPA or courts would not accept requests to suspend decisions in cases while related cases deciding the status of the trademarks in question were being heard. For example, where a brand owner had a trademark application rejected due to an earlier-filed bad-faith mark, a common strategy would be to take action against the earlier mark via opposition, non-use cancellation, or invalidation while the brand owner simultaneously files a review of refusal on their rejected application. However, very often, a decision on the review of refusal will be issued before the counter-action is decided, thus leaving the owner to either continue to file costly appeals or refile an application for their own trademark. Frequently, the new back-up application could encounter the same rejection, with the frustrating cycle of needing new filings startingall over again. Both appeals and refilinghave their own risks plus additional costs while adding unnecessary matters to an already busy system.

CNIPA has decided to address this long-standing issue, and recognized that it created inefficiencies for legitimate rights holders and within the judicial and administrative systems overall. At the same time, CNIPA highlighted that the option to suspend cases was already built into the Trademark Law. However, in the past, the use of the term "may" inevitably led to inconsistencies in implementing suspensions, Therefore the revised regulations now use "shall" for a number of situations where suspension must be applied and reducing the discretionary space for implementing such requests.

Going forward, suspension will be allowed and even required, upon written request by a party or where determined to be appropriate by the examiner or judge in a number of trademark review cases including review of refusals, trademark administrative litigations, review of cancellations, review of oppositions, and invalidations. Generally, suspensions will be implemented where the determination of prior rights in a case has a substantial impact on the reviewing case result where the parties submit a written request to suspend or where the examiner or judge has deemed it appropriate. However, if other grounds or rights can sufficiently help determine the case, the review will not be suspended.

CNIPA specified 7 situations where suspension is required and 3 situations where a case should be suspended based on the circumstances in that case.

The examiner shall suspend if:

1. The disputed trademark or the cited trademark is undergoing an ownership change or name change, and after such successful change, there is no longer a conflict of rights between the involved trademarks.

2. The cited trademark has expired and is in the process of renewal or in the grace period of renewal.

3. The cited trademark is undergoing removal or withdrawal application procedures.

4. The cited trademark has been revoked, declared invalid, or has expired and is not renewed, but still within the one-year restriction period (gap year) from the time of case review.

It should be noted that if the rejection ground does not involve Article 50 of the Trademark Law, there is no need for suspension. According to the "Trademark Examination and Adjudication Guidelines," if the cited trademark has been revoked due to non-use for three consecutive years, it should be handled according to the said guidelines.

5. The case involving the cited trademark has reached a conclusion and is awaiting the effectiveness of the conclusion or the execution of an effective judgment awaiting re-trial.

6. The determination of prior rights involved in the case must be based on the result of another case being examined by the People's Court or being handled by an administrative authority. (This is specifically suitable for review of opposition and invalidation cases)

7. The determination of the status of the cited trademark rights involved in the case must be based on the result of another case being examined by the People's Court or being handled by an administrative authority, and the applicant explicitly requests the suspension of the review. (This is specifically suitable for review of refusal cases)

The examiner may suspend if:

a) Where the cited trademark is subject to an invalidationaction based on bad faith, and the registrant of the cited trademark has been found to be engaging in bad faith as defined in Article 4, Article 19(4), Article 44(1), etc. (Note that the difference between this and number (7) above is that it does not require the applicant to request the suspension. The examiner can autonomously decide whether to suspend based on the specific case circumstances, effectively reducing the burden of repeated applications and exhausting legal procedures caused by malicious trademark registrations on legitimate rights holders).

b) It is necessary to wait for a decision in a prior or related case with identical facts, determined on a case by case basis. (Note that this situation may not involve a cited trademark, so it does not require the applicant to request the suspension. However, to coordinate administrative authorization procedures, administrative and judicial procedures, unify the standards of examination and review, avoid procedural loops caused by contradictory conclusions, and effectively reduce the burden on the parties involved, the examiner can autonomously decide whether to suspend based on the specific case circumstances.

c) Other situations in which the review process can be suspended. (Note that this allows the examiner to autonomously decide whether to suspend based on the specific case circumstances and need).

Note that in review of refusal cases where suspension is desired, an applicant may file a written request to suspend citing the actions taken to remove obstacles to the cited trademark rights within three-month period for submitting supplementary materials from the date of first filing the review of refusal. Other time limits and deadlineshave not been specified but we recommend continuously updating the examiner or judge on status of related cases until further guidelines are issued.

Over time we expect CNIPA to strictly implement the newest standards for suspending trademark cases and from there continue to improve the standardization based on what is learned in practice as suspensions are implemented. We will be providing updates along the way.

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.