On June 13, 2023, the China National Intellectual Property Administration (CNIPA) issued an Interpretation on the Rules for Suspension of Review Cases《评审案件中止情形规范》解读. The Rules will improve several aspects of trademark practice in China for brand owners as they aim to decrease repeated trademark filings and legal proceedings.
The Rules detail multiple situations where a suspension should be grated or can be granted, depending on the circumstances of the case. It is clear from the Rules that the CNIPA is making a concerted effort to improve the allocation of administrative and judicial resources and, at the same time, reduce the applicant’s burden for procedures.
Circumstances (Applicant’s Request)
At the applicant’s request, the circumstances that shall be suspended include (where the first five apply to cases of Review of Refusal, Review on Disapproval of Registration and Invalidation):
- The disputed mark or cited mark is in the process of name change, trademark transfer, and there is no longer a conflict of rights between the disputed mark or cited mark after the name change or trademark transfer;
- The cited mark has passed its validity period and is in the process of renewal or grace period of renewal;
- The cited mark is in the process of voluntary removal or withdrawal;
- If the cited mark isrevoked, declared invalid, or no longer renewed at the expiration of the period, and it is less than one year from the date of revocation, declaration of invalidity, or removal at the time of the case trial;
- The case involving the cited mark has a conclusion waiting for the conclusion to take effect or the execution of the effective judgment waiting for a retrial.
- The prior rights involved must be based on the outcome of another case being tried by a Chinese court or handled by the administrative authorities (this situation only applies to Review on Disapproval of Registration and Invalidation cases);
- The status of the cited mark involved must be based on the results of another case being tried by the Chinese court or handled by the administrative authorities, and the applicant clearly requests to suspend the trial (this situation is especially applicable to Review of Refusal cases).
Circumstances (Examiner’s Request)
Then there are three circumstances where examiners may decide to suspend a hearing at their own discretion:
- If the cited mark involved in the Review of Refusal case has been filed invalidation, and the registrant of the cited mark has been determined in other cases to constitute malicious registration situations as stipulated in Article 4, Article 19.4, and Article 44.1 of the Trademark Law, the trial may be suspended (this situation does not require the applicant to submit a suspension application, the examiner may independently decide whether to suspend the hearing based on the specific case);
- If it is necessary to wait for the same case or related cases to be ruled beforehand, the trial may be suspended on a case-by-case basis (this situation does not require the applicant to submit a suspension application, the examiner may independently decide whether to suspend the hearing based on the specific case); and,
- Other situations where the trial may be suspended. For situations that cannot be exhausted, based on the principles of necessity and in favour of legitimate rights, and taking the above situations as a reference, the examiner may decide whether to suspend the trial at its discretion.
It is expected that the Rules will solve difficulties in practice, such as the lack of coordination between various administrative procedures and between administrative and judicial procedures.
It will also greatly reduce the unnecessary costs for legitimate rights holders to obtain trademark rights as well as saving administrative and judicial resources. Applicants should review ongoing cases before the CNIPA to see how the Rules may apply and if they can utilise them to their advantage.