Recently, the Trademark Office of the China National Intellectual Property Administration (CNIPA) issued an interpretation of the Specification on Suspension of Trademark Review Cases. It states that the specification stipulates seven situations that should be suspended and three situations that can be suspended depending on the specific circumstances of the case.

The Review and Adjudication System for Trademark Review Cases issued by CNIPA on June 15, 2021, added a new Specification on Suspension of Trademark Review Cases in light of the actual situation of review work. In order to facilitate trademark reviewers and parties to review cases to understand and apply it, the interpretation is as follows:

Formulation Ideas and Considerations

First, it actively responds to social concerns, starts from the perspective of benefiting legitimate right holders, solves the long-standing problems in practice such as the lack of coordination between various procedures for administrative authorization and confirmation of rights and between administrative procedures and judicial procedures, changes in circumstances, procedural idling, and new cases arising from old ones, reduces the burden on legitimate right holders who have to repeatedly apply and exhaust legal procedures to avoid losing their rights after removing obstacles from cited trademarks and then having others apply earlier, reduces the unnecessary institutional costs for legitimate right holders to obtain trademark exclusive rights, and ensures that the statutory time limit set by the Trademark Law returns to the legislative intent of promoting legitimate right holders to obtain authorization and confirmation of trademark rights in a timely manner.

Second, it coordinates with the source governance work of judicial procedures. For administrative lawsuits filed by parties who are dissatisfied with the rejection decision in rejection review cases, Beijing Intellectual Property Court adopts pre-litigation mediation measures for some cases involving cited trademarks whose rights status is pending. According to current statistics, the review period for opposition and invalidation cases is generally one to six months longer than that for rejection review cases, and the review period for withdrawal of three cases is generally similar to that for rejection review cases. This time difference also means that during the pre-litigation mediation period, there is a greater possibility of changes in the rights status of cited trademarks involved in rejection review cases. Therefore, it is very necessary to suspend the review of rejection review cases moderately, saving resources for all parties involved in litigation, administration and justice.

Third, it is based on laws and regulations. The basis for formulating specifications not only includes Article 35 Paragraph 4 and Article 45 Paragraph 3 of the current Trademark Law on suspension provisions for review of non-registration and invalidation procedures; Article 11 of the current Implementing Regulations of the Trademark Law on provisions for situations not included in the time limit; but also refers to civil litigation suspension situations and relevant legal provisions, as well as suggestions for amending the Trademark Law to clarify suspension procedures for rejection reviews and suggestions for amending Article 11 of the Implementing Regulations of the Trademark Law.

Fourth, it ensures feasibility. After the implementation of the specification, the proportion of cases suspended will increase significantly. To cope with this change, on the one hand, the online application rate for review cases has been fully increased to more than 80%, freeing up space for storing case files; on the other hand, it fully respects the wishes of the parties. Whether or not to suspend a rejection review case is subject to whether or not an application for suspension is filed by an applicant (except where examiners initiate suspension due to suspected malicious registration of cited trademarks), and resumption of review is subject to whether or not an applicant submits corresponding evidence materials proving that cited trademark rights status has been determined. The application for suspension does not require a separate application as a criterion. Waiting for results of cases involving cited trademarks is often one of main reasons for applicants’ reviews. Results of cases involving cited trademarks and whether or not suspended cases can resume review are also progress situations that applicants are most concerned about.

Fifth, it unifies standards. The expression “can” be suspended in practice inevitably leads to inconsistency in actual execution. The specification revises all suspendable situations that can be unified into “should” be suspended expressions, thereby reducing discretionary space in execution.

Specific Content of Specification

First, it is principle of suspension, namely necessity principle. Only when determination of prior rights involved in case review has substantial impact on results should it be suspended; other grounds for review or other prior trademarks whose rights status has been determined are sufficient to determine case conclusion should not be suspended.

Second, it is situation of suspension. The specification stipulates seven situations that should be suspended and three situations that can be suspended depending on specific circumstances of case. Among situations that should be suspended, there are five applicable to rejection reviews, non-registration reviews and invalidation declarations respectively:

(1) Disputed trademark or cited trademark is undergoing registrant name change or transfer procedure and there is no longer any rights conflict after change or transfer;

(2) Cited trademark has expired and is in renewal procedure or renewal grace period;

(3) Cited trademark is in cancellation or withdrawal application procedure;

(4) Cited trademark has been revoked, declared invalid or not renewed upon expiration, and time of revocation, invalidation or cancellation has not been more than one year at time of case review; it should be noted that suspension is not required if grounds for rejection do not involve Article 50 of Trademark Law; according to Trademark Examination and Review Guidelines, if cited trademark is revoked for cessation of use for three consecutive years, guidelines shall be followed;

(5) Cases involving cited trademarks have conclusions waiting for conclusions to take effect or execution of effective judgments waiting for retrial.

There is one situation specifically applicable to non-registration reviews and invalidation declarations, which is consistent with provisions of Article 35 Paragraph 4 and Article 45 Paragraph 3 of current Trademark Law, namely:

(6) Prior rights involved must be based on results of another case being heard by people’s court or being handled by administrative organ;

There is one situation specifically applicable to rejection reviews, namely:

(7) Rights status of cited trademarks involved must be based on results of another case being heard by people’s court or being handled by administrative organ, and applicant clearly requests suspension of review;

Here, in order to maximize the original intention of benefiting legitimate right holders, no distinction is made between time and applicant of application for cases involving cited trademarks. However, applicant for rejection review case should clearly state specific situations such as registration number, procedure and relationship with this case of cited trademark involved in suspension, and whether or not to suspend must also meet aforementioned necessity principle.

There are three situations that can be suspended, namely:

(8) Invalidity declaration request has been filed for cited trademark involved in rejection review case, and registrant of cited trademark has been found to constitute malicious registration under Article 4, Article 19 Paragraph 4, Article 44 Paragraph 1, etc. of Trademark Law in other cases. Review can be suspended; difference between this situation and situation (7) above is that it does not require applicant to request suspension as a requirement. Examiner can decide whether or not to suspend according to specific circumstances of case, thereby effectively reducing repeated applications and exhausting legal procedures caused by maliciously registered trademarks for legitimate right holders.

(9) It is necessary to wait for prior ruling or judgment of same or related cases. According to needs of individual cases, review can be suspended; this situation does not necessarily involve cited trademarks. Therefore, it does not require applicant to request suspension as a requirement. However, in order to coordinate various procedures for administrative authorization and confirmation of rights and administrative procedures and judicial procedures, unify examination and review standards, avoid contradictory conclusions leading to procedural looping, and effectively reduce burden on parties. Examiner can decide whether or not to suspend according to specific circumstances of case.

And (10) other situations that can be suspended. For situations that cannot be exhausted, based on principles of necessity and benefiting legitimate right holders, examiners can decide whether or not to suspend according to specific circumstances of case with reference to above situations.

Third, it is procedure for suspension. The specification clearly stipulates time limit requirements, channels, necessary conditions for resuming review after elimination of suspension situations, etc. In order to ensure rights and interests of legitimate right holders while taking into account efficiency and fairness and stability of trademark registration order. Examiner should apply for suspension of case review within prescribed time range; applicant for rejection review case should also explain actions taken to remove obstacles from cited trademarks no later than three months from date of filing rejection review application.

For situation (7) above where applicant for rejection review case needs to request suspension of review clearly. It can be submitted together with grounds for rejection review. Request for suspension should state specific situations such as registration number, procedure and relationship with this case of cited trademark involved in suspension. In principle, whoever applies for suspension applies for lifting suspension. After rights status of cited trademark is determined. Applicant should submit corresponding evidence materials. Examiner receives supplementary evidence from applicant and confirms that suspension situation has been eliminated. Review resumes.

After elimination of above various suspension situations. Examiner shall review case according to facts at time of review and shall conclude case within prescribed time limit.

In future trademark review cases. We will strictly implement various contents of Specification on Suspension of Trademark Review Cases; and further improve specification content in combination with practice. Give full play to role of administrative procedure in settling disputes definitively. Effectively optimize allocation of administrative resources and judicial resources. Reduce administrative procedure burden and litigation burden on legitimate right holders for trademark authorization confirmation. “People call me”, follow public opinion and do practical things. Promote high-quality development of trademark cause.