On 13 June 2023, the China National Intellectual Property Administration (CNIPA) issued the Interpretation of Rules on Suspension of Trademark Proceedings (Rules), to facilitate the timely authorization of trademark rights for legitimate rights holders, and reduce the scope for discretion in this regard.
As per the Rules, suspension of trademark proceedings is based on the principle of necessity. Namely, only cases involving the determination of prior rights and other circumstances that have a substantial impact on the outcome of the review should be suspended; if other grounds or other prior trademarks under stable status are sufficient to determine the conclusion of the case, the review should not be suspended according to the CNIPA.
The Rules specify the following seven circumstances in which case review should be suspended:
1) The trademark at issue or the cited trademark is in the process of change of the name of the registrant or assignment, and there is no longer a conflict of rights in the trademark at issue or the cited trademark after the change or assignment;2) The cited trademark has passed the expiry date and is in the renewal process or the grace period;3) The cited trademark is in the cancellation/de-registration or withdrawal of the application process;4) If the cited trademark has been cancelled, invalidated or is not renewed upon expiry, and one year has not yet elapsed since the date of cancellation/de-registration or invalidation of the cited trademark at the time of review of this case;5) The cases involving cited trademarks have been concluded and are awaiting the entry into force of the conclusion or the enforcement of the judgement in force and are awaiting re-determination;6) The prior right involved must be based on the outcome of another case that is pending before a court or being handled by a governmental department;7) The status of the cited trademark must be based on the results of another case under trial by a court or being handled by a governmental department, and the applicant has explicitly requested a stay of proceedings.
A case review may be suspended under any one of the following three circumstances, as listed in the Rules:
1) The cited trademark involved in the case of appeal for rejection has been requested in an invalidation, and the registrant of the cited trademark has been found in other cases to be in bad faith in accordance with Articles 4, 19(4) and 44(1) of the Trademark Law;2) The cases that need to wait for a prior decision or judgement on the same or related cases;3) Other circumstances in which case review may be suspended.
An application for suspension of a review case should be filed in the CNIPA within the prescribed timeframe and, in principle, no later than the three-month period for filing of the further statement and evidence in a case.
In cases involving the application of suspension, the applicant needs to make a proactive request in writing, clearly stating the actions taken by the applicant to remove obstacles to the right, as well as the registration number of the trademark at issue, the status of the procedure at issue, the status of the trademark, the relevance of the case and other relevant facts.
After the status of the cited trademark is determined, the applicant should take the initiative to file the corresponding evidence and apply for lifting the suspension.
The CNIPA’s issuing of the Rules is definitely good for legitimate rights holders. It remains to be seen as to how these Rules are applied in practice. Further, we expect the court's to develop rules based on these Rules in the future.
We also note that the Rules do not clarify whether the appeal for rejection should be suspended pending non-use cancellations against cited trademarks, which often occur in practice. It seems the examiners would still have the discretion to determine to accept the suspension request of appeal for rejection pending non-use cancellations, or not. In this case, applicants may consider filing a backup trademark application, to avoid the unexpected rejection before completion of a non-use cancellation and a third party’s filing.