On June 13, 2023, the National Intellectual Property Administration, PRC ("CNIPA") issued an interpretation of Conditions for Suspending Review Cases, which specifies seven explicit situations that require suspension and three situations that can be suspended based on specific case circumstances. This will provide a package solution for trademark review of refusal case, trademark administrative litigation case and its related cases, like review of cancellation, review of opposition, invalidation; it will also effectively reduce the administrative and litigation burdens on legitimate rights holders in trademark prosecution.
The CNIPA stated that in future trademark review cases, they will strictly implement the provisions of the "Standard for Suspending Review in Examination Cases" and further improve the standardization based on practical experience.
Development approach and considerations
1) To actively respond to social concerns and address the long-standing issues in practice, such as the lack of coordination between administrative procedures for granting rights and between administrative and judicial procedures, as well as problems of changes in circumstances, idle procedures, and the emergence of new cases based on existing ones. To reduce the burden of legitimate rights holders who repeatedly apply, exhaust legal procedures, etc., in order to avoid encountering new trademark obstacles after the previously cited mark is cleared.
2) It coordinates with the work of judicial procedures in addressing the source control of litigation. In cases where the parties involved in review of refusal cases file administrative lawsuits against the rejection decisions, the Beijing Intellectual Property Court adopts pre-litigation mediation measures for cases where the status of the cited trademark rights is uncertain. According to current statistics, the duration of opposition and invalidity proceedings is generally longer than that of review of refusal proceedings, the former takes around 12 months, whereas the latter takes around 9 months. This time difference implies a greater possibility of changes in the status of the cited trademark rights during the pre-litigation mediation period. Therefore, it is necessary to reasonably suspend the review of refusal cases to save resources for the parties, administrative bodies, and the judiciary.
3) It is based on legal and regulatory provisions. The basis for the regulation includes not only the existing provisions on suspension in Article 35(4) and Article 45(3) of the current Trademark Law regarding review of non-registration and invalidation procedures, and Article 11 of the Implementing Regulations of the Trademark Law regarding situations not counted towards the time limit for examination but also references to situations of suspension of trial in civil litigation and relevant legal provisions, as well as the proposed amendments to the Trademark Law, which specifically mention the suspension procedure for review of refusal cases, and the proposed amendments to Article 11 of the Implementing Regulations of the Trademark Law.
4) Ensuring feasibility: After the standardized implementation, there will be a significant increase in the proportion of cases suspended for review. To address this change, on one hand, the online application rate for review cases has been comprehensively increased to over 80%, resulting in the release of space for storing case files. On the other hand, the wishes of the parties involved are fully respected. Whether a review case is suspended or not is conditional upon the applicant's request for suspension (excluding cases where the examiner actively suspends due to suspected malicious registration of the cited trademark). In principle, the resumption of review requires the applicant to submit corresponding evidence materials to prove the determination of the status of the cited trademark rights. The suspension request does not necessarily have to be submitted as a separate application. Waiting for the result of the cited trademark-related case is often one of the main reasons for the applicant's review request, and the progress of the cited trademark-related case and the possibility of resuming the suspended case are the key concerns for the applicant.
5) Standardizing criteria: In the past, the expression "may" in terms of suspension inevitably led to inconsistencies in practical implementation. The revised regulations now use the expression "shall" for situations where suspension is permissible, thereby reducing discretionary space in the implementation process.
Specific Contents of Standardization
Firstly, the principle of suspension is based on necessity. Only when the determination of prior rights in the case has a substantial impact on the review result, the review process will be suspended. If other review grounds or the determination of other rights can sufficiently determine the conclusion of the case, the review should not be suspended.
Secondly, the situations for suspension are specified. Seven explicit situations that require suspension and three situations that can be suspended based on specific case circumstances are regulated. Among the situations that require suspension, five are applicable to cases of review of refusal, review of opposition, and invalidation action. They are as follows:
(1) The disputed trademark or the cited trademark is undergoing a ownership change or name change, and after such 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, and the date of revocation, invalidation, or cancellation is less than one 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.
There is one specific situation applicable to review of opposition and invalidation cases, which is consistent with the provisions of Article 35(4) and Article 45(3) of the current Trademark Law, namely:
(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.
There is one specific situation applicable to review of refusal cases, namely:
(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.
To maximize the original intention of benefiting the legitimate rights holders, there is no longer a distinction based on the time and subject of the application for cited trademark cases. However, the applicant for review of refusal cases should clearly explain the specific details related to the cited trademark, including the registration number, the current procedure, and its relationship with the case. Moreover, the requirement for suspension must also satisfy the aforementioned principle of necessity.
The three situations in which the review process can be suspended are as follows:
(8) In review of refusal cases, if the cited trademark has been subject to an invalidation action, and the registrant of the cited trademark has been determined in other cases to engage in malicious registration as defined in Article 4, Article 19(4), Article 44(1), etc., the review process can be suspended. The difference between this situation and situation (7) mentioned 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.
(9) If it is necessary to wait for a ruling or judgment in a prior or related case with identical facts, the review process can be suspended based on the specific case needs. 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.
Additionally, (10) other situations in which the review process can be suspended. For unresolved situations, based on the principles of necessity and benefiting legitimate rights holders, and with reference to the aforementioned situations, the examiner can autonomously decide whether to suspend based on the specific case circumstances.
The standardization provides clear provisions regarding the time limit requirements, procedures for applying for suspension, and the necessary conditions for resuming the review process after the suspension. To ensure the rights and interests of legitimate rights holders, while considering efficiency, fairness, and the stability of the trademark registration system, the applicant should apply for the suspension of the case within the specified time frame. In review of refusal cases, the applicant should provide written explanations of the actions taken to remove obstacles to the cited trademark rights no later than the three-month period for submitting supplementary materials since the date of application of review of refusal.
For situation (7) mentioned above, which requires the review of refusal applicant to explicitly request the suspension of the review, the request can be included in the grounds for review of refusal. The request for suspension should specify the cited trademark registration number, current procedure, and its relationship to the case. In principle, the party who requested the suspension should request the lifting of the suspension after the status of the cited trademark rights has been determined. Once the applicant submits the corresponding evidence materials, if the examiner receives the applicant's supplementary evidence and confirms that the suspension situation has been resolved, the review process should resume.
After the suspension situations mentioned above end/disappear, the examiner should continue to examine the case based on the factual status at the time of the examination and complete the case within the prescribed time limit requirements.
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.
