Insight: Interpretation of Trademark Review Suspension Criteria Issued by CNIPA
By Hongxiao Sun
On June 13, 2023, the China National Intellectual Property Administration (CNIPA) introduced the “Regulations on the Circumstances of Suspending Adjudication Cases” in conjunction with the actual work of trademark review. The interpretation of these regulations was also released. On July 26, 2023, the trademark attorneys of CN-KnowHow has participated the training session hosted by the China Trademark Association. The Director of the Trademark Review Department of CNIPA provided further detailed explanations on the regulations and addressed specific issues that may arise during the examination process. This article extended the training to a summary and share some insights about the Regulations.
According to the interpretation document, the regulations cover (1) principles of suspension, (2) seven situations that must be suspended and three situations that can be suspended, along with the corresponding case types, and (3) procedures for suspension.
The core content of point (2) is presented in tabular form below:
| Type of Applicable Case | Circumstances | Can/Should |
|---|---|---|
| Dismissing the Review Case | (1) the alteration or assignment of the cited trademark;
(2) the citation trademark in the renewal or to be renewed; (3) the cancellation or withdrawal of the cited trademark; (4) the citation trademark has been revoked, invalid or has not been renewed after the expiration of the period for no more than one year; (5) the cited trademark waits for the conclusion to take effect or to be re-determined; (7) The citation trademark is waiting for the trial (in the process of cancellation, invalidation, objection, etc.), and the applicant clearly makes a request for suspension of the trial; |
Should |
| (8) the cited trademark is declared invalid, and the registrant of the cited trademark has been deemed to constitute malicious registration in his case (the applicant has not voluntarily filed an application for suspension)
(9) Waiting for the same case of the case or the result of the relevant case (10) other circumstances under which the trial may be suspended |
Can | |
| Review cases shall not be registered and Invalid declaratory case | (1) It is the alteration and transfer of the trademark;
(2) the citation trademark in the renewal or to be renewed; (3) the cancellation or withdrawal of the cited trademark; (4) the citation trademark has been revoked, invalid or has not been renewed after the expiration of the period for no more than one year; (5) the cited trademark waits for the conclusion to take effect or to be re-determined; (6) in the trial of prior rights |
Should |
| (9) Waiting for the same case of the case or the result of the relevant case
(10) other circumstances under which the trial may be suspended |
Can |
Our Comments:
Among the three types of cases where suspension of adjudication is applicable, the overall quantity of cases in refusal review is the highest, making it the most beneficial category. It is well known that before the publication of these regulations, many parties involved in refusal review cases had already taken actions such as cancellation, opposition, or invalidation against the cited trademarks. However, due to the generally longer or similar processing time for opposition, invalidation, and cancellation compared to refusal review, the right status of the cited trademarks might not have been definitively determined before the rejection review decision. This situation required the parties to resort to administrative litigation or reapply, leading to unnecessary costs and procedural burdens. The release of these regulations has finally resolved this long-standing issue that has troubled trademark practice in China and has saved resources for the parties involved, as well as the administrative and judicial aspects.
According to feedback from the Director of the Review Department, since the interpretation of the regulations was published on June 13 until the end of June, the number of various cases where suspension requests were filed increased by 44%, demonstrating the significant impact of these regulations on practical application. Based on the learning and communication content from the training session, I have summarized several practical recommendations for trademark applicants:
1. Considering the large number of trademark registrations and limited trademark resources in China, with a high rate of trademark registration duplication, it is advised that trademark applicants actively clear obstacles found during the search or obstacles cited in rejection by utilizing procedures such as withdrawal, opposition, invalidation, or other means. At the same time, they should submit a request for suspension of examination during the rejection review process to obtain rights by clearing obstacles through the rejection review procedure.
Note: According to the regulations regarding the suspension procedure, applicants in rejection review cases should submit a request for suspension of examination within three months from the date of the rejection review application, providing a written explanation of their actions to clear the cited trademark’s right barriers. Therefore, actions such as withdrawal, invalidation, or opposition against the cited trademark should be initiated no later than three months before the expiration of the supplementary deadline.
2. For cases of non-registration review and invalidation declaration, it is recommended that the parties involved actively investigate the registration and usage status of prior trademarks. Once cases of malicious squatting or non-use after registration are discovered, they should actively seek invalidation or withdrawal to eliminate the prior rights and prevent future troubles.
Note: According to the regulations, for such cases, applicants do not need to actively request suspension of examination. The examiner should initiate the suspension based on the case. However, in practice, we believe that the parties involved should promptly take actions against the prior trademark, such as withdrawal or invalidation (not later than three months after the application or defense date of the corresponding case), and then actively submit a request for suspension of examination to remind the examiner to suspend the process promptly.
3. It is recommended that applicants, in all review cases, actively monitor changes in the right status of the cited trademarks/contested trademarks and proactively submit written requests for suspension of examination (even if not required by the regulations) to maximize their rights. After the right status of the cited trademark is determined, applicants should promptly submit corresponding evidence materials and apply for the lifting of the suspension, requesting the examiner to process the case according to the latest factual status.
4. According to the regulations, the suspension of examination follows the principle of “necessity.” Only when the determination of prior rights during the case examination substantially affects the examination result, should the examination be suspended. If other rejection reasons (such as absolute grounds) or the determination of the status of other prior trademarks are sufficient to determine the case outcome, suspension is not required. Therefore, in cases of rejection review with multiple cited trademarks, if the status of only some of the cited trademarks is uncertain, the conditions for suspending the examination are not met. In such cases, if necessary, applicants should still consider the old method before the publication of the regulations, which is to reapply while going through the rejection review, to keep the trademark valid until the other cited trademarks meet the conditions for clearing, providing another opportunity to obtain rights.