In the latest update from the MARQUES China Team, Ling Zhao and Shufang Zhang discuss the rules on the suspension of trade mark procedures.

Suspension of review

In accordance with Article 35, paragraph 4 of the China Trademark Law, if the Trademark Review and Adjudication Board determines that the prior rights involved in the review must be based on the results of another case being tried by the Court or handled by an administrative organ, the review may be suspended.

Once the reasons for suspension are eliminated, the review procedure should be resumed. There are similar regulations regarding suspension of examination on invalidation and review of non-approval of registration per Article 45 of the China Trademark Law. In accordance with Article 11 of the Implementing Regulation on China Trademark Law, the period of suspension should be excluded from the statutory examination term.

In practice, we often encounter situations where applicants hope to request suspension of review or invalidation, waiting for the outcome of a parallel procedure to determine the legal status of a cited trade mark. It would be helpful if the China National Intellectual Property Administration (CNIPA) clarified its official criteria.

Guidelines

Recently, the CNIPA issues the Regulation on Trademark Review and Adjudication, which is the internal working guideline on trade mark review and adjudication to be followed by examiners. In the Regulation, the CNIPA provides the specific rules on suspension.

To aid understanding of CNIPA’s practice, it explained the regulation on suspension in an article posted on its website on 13 June 2023.

According to the Regulation, there are seven situations in which the CNIPA should grant suspension request of the applicant, and there are three situations in which the CNIPA may grant suspension request of the applicant.

Among the seven situations of “should”, the following five situations can be applied to review procedures such as review of refusal, review of non-approval of registration and invalidation:

• The mark in question or the cited mark is in a procedure such as name change or assignment, and the conflicts of rights will be removed after the completion of such change or assignment;
• The validity period of the cited mark lapses and is in a renewal procedure or grace period of renewal;
• The cited mark is in a procedures such as removal of registration or withdrawal of application;
• The cited mark is cancelled, declared invalid or lapses without renewal, and it is within one year as of the day of invalidation or cancellation when the case is examined. If the cited mark is cancelled due to non-use, the one-year-term is not applied. In other words, we do not need to wait one year after the cited mark is cancelled is cancelled for non-use.
• The official decision affecting the legal status of the cited mark is already issued and to be effective, or a new official decision affecting the legal status of the cited mark is to be issued soon according to an effective judgment.

The following situation is applied to review of non-approval of registration and invalidation procedures:

• The determination of the prior rights involved must be based on the result of another case being tired by the Court or handled by the administrative organ.

And the following situation is applied to review of refusal procedure only:

• The determination of the legal status of the cited mark must be based on the result of another case being tried by the Court or handled by the administrative organ, and the applicant files the request of suspension.

In this situation, there is no requirement on when or who initiates the action against the cited mark, but the applicant needs to provide the number of the cited mark, the procedure, and the relevance to the present case in the suspension request.

Aside from the above listed situations of “should”, the following three situations are categorized as “may”:

• In review of trade mark refusal, the cited mark is pending in invalidation procedure, and the holder of the cited mark has been considered as acting in bad faith in other cases. In this situation, the examiner can decide whether examination shall be suspended on their own, so as to further ease the burden of the applicant.
• The result of similar cases or result of relevant cases shall be used as reference. In such scenarios, the examiner can decide in individual cases.
• Other situations wherein suspension is necessary.

Suspension procedure

The CNIPA also clarifies the procedures for suspension. For situations where suspension is requested by the applicant, the request should be filed within three months since the filing of the review, or at the time of filing the review, in written form. And the removal of suspension shall also be filed by the party initiating the suspension when the situation for suspension no longer exists.

Ling Zhao and Shufang Zhang are members of CCPIT Patent and Trademark Law Office. Find out more about trade marks in China on the China Team page on the MARQUES website.