New rules for suspension of trademark review cases in China – putting an end to repeated trademark filings
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Partner
China
I am a partner in our China intellectual property team based in Hong Kong. Clients come to me for guidance on all aspects of brand and product design protection, enforcement and monetisation in China and across the APAC region.
Trademark Associate
China
As an associate in our Intellectual Property team based in Beijing, I specialise in trade mark law and copyright in China, with a clear mission to solve IP issues for our clients worldwide.
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On 13 June 2023, the China National Intellectual Property Administration (CNIPA) published an Interpretation of the Rules for Suspension of Review Cases (the Rules), aiming to address the issues of repeated trademark filings and repeated legal proceedings. The Rules will considerably impact many aspects of trademark practice in China.
The Rules stipulate seven circumstances where a suspension should be granted and three circumstances where a suspension can be granted, depending on the specific circumstances of the case.
Seven circumstances where a suspension should be granted
Among the circumstances that a suspension should be granted, five of them (items 1-5) are applicable to the Review on Refusal, Review of Opposition, and Invalidation; one circumstance (item 6) is specifically applicable to cases of Review of Opposition and Invalidation (which is consistent with the provisions of Article 35(4) and Article 45(3) of the current PRC Trademark Law); and another one (item 7) is specifically applicable to cases of Review on Refusal.
Type of case |
No. |
Circumstances where a suspension should be granted |
|
Review on Refusal; Review of Opposition; Invalidation |
1 | The disputed mark or the cited mark is in the process of change of name of registrant or recordal of assignment, and there is no longer a conflict of rights between the disputed mark or cited mark after the change or transfer |
| 2 | The cited mark has expired and is within the grace period for renewal | |
| 3 | The cited mark is in the process of removal of registration or withdrawal of application | |
| 4 | The cited mark has been cancelled [due to improper use of a registered trademark or generic name], invalided or not renewed upon expiration, and the date of cancellation, invalidation or removal has not reached one year when Review of Refusal is examined | |
| 5 | Cases related to the cited mark has been decided and is waiting for the decision to take effect, or the enforcement of the effective judgment is pending a retrial | |
|
Review of Opposition; Invalidation |
6 | Where the prior rights concerned must be based on the outcome of another case being heard by the court or being dealt with by the administration department |
| Review on Refusal | 7 | Where the status of the cited mark must be based on the outcome of another case being heard by the court or being dealt with by the administrative department, and where the applicant has explicitly requested for a suspended hearing of Review on Refusal |
Three circumstances where a suspension can be granted
Under the following three circumstances, applicant’s request for a suspended hearing is not a prerequisite for CNIPA’s suspension of examination. Examiners have the discretion to decide whether to suspend the examination on a case-by-case basis.
Type of case |
No. |
Circumstances where a suspension can be granted |
| Review on Refusal | 8 | Examination of Review on Refusal can be suspended under the circumstance where the cited mark is pending an invalidation and the registrant of cited mark has been found of bad faith in registering trademarks in other cases |
|
Review on Refusal; Review of Opposition; Invalidation |
9 | Where cases that need to wait for a prior decision or judgment of identical or similar circumstances |
| 10 | Other circumstances based on the principle of necessity and benefit to legitimate right holders |
Suspension based on applicant’s request for review on refusal
According to the Rules, applicant’s request for a suspended hearing for Review on Refusal is explicitly required under situation 7 outlined above. The Rules also set out requirements on timeframe, ways to request suspension and the necessary conditions for resuming examination after the circumstances for suspension are eliminated:
- Applicant is allowed to request for a suspended hearing for Review on Refusal no later than the three-month supplemental submission deadline from the filing of review on refusal. Such request can be filed either together with refusal review arguments / supplemental arguments or separately before the supplemental submission deadline.
- To proceed, applicant shall submit a written statement to CNIPA to request for a suspended hearing for Review on Refusal, including trademark number of the cited mark, legal action against the cited mark and how the outcome of the cited mark impacts the pending trademark application in Review on Refusal.
- In principle, applicant requested the suspended hearing for Review on Refusal, is responsible for requesting the resumption of the examination. Once the status of the cited mark is concluded, applicant shall inform CNIPA by submitting a statement and corresponding evidence . Examiners shall continue the examination of Review on Refusal upon receipt of evidence and confirmation of status of the cited mark.
Highlights in the rules
The issuance of the Rules shows the determination of CNIPA to restore the order of trademark registration following the Draft Amendment to the PRC Trademark Law (“the Draft”) issued on 13 January 2023. According to Articles 14 and 21 of the Draft, repeated filings will no longer be allowed. This Rules will supplement and refine the relevant stipulations in the Draft.
As a summary, below are the significant improvements / highlights of the Rules: -
- Previously, applicant usually takes actions against a cited mark first and files trademark applications thereafter to ensure CNIPA will suspend the hearing of Review on Refusal until the outcome of the cited mark is available. Yet under the new rules, timing and applicant of action taken against the cited mark will no longer be a consideration in granting suspension for Review on Refusal cases.
- It is foreseen that repeated trademark filings will no longer be an option a client can make to preserve the right. The request for suspended hearing will be widely applied in review cases.
