Recently the China National Intellectual Property Administration (“CNIPA”) released Interpretation of Rules on Suspension of CNIPA Trademark Proceedings (“Suspension Rules”). The Suspension Rules provides clear guidance on the circumstances under which a CNIPA trademark proceeding shall be or may be suspended.
The Suspension Rules make it clear that a CNIPA trademark proceeding shall be suspended under any one of the following seven circumstances:
- The disputed trademark or the cited trademarks are in the process of change of registrant’s name or assignment, and there will be no conflict of rights between the disputed trademark and the cited trademarks after the change of registrant’s name or assignment is completed;
- The cited trademark has expired and is in the process of renewal or a grace period for renewal;
- The cited trademark is in the process of removal of trademark registration or withdrawal of trademark application;
- The cited trademark has been cancelled, declared to be invalid or not be renewed upon expiration, and it is during one year from the date of cancellation, declaration of invalidation, or expiration when the case is examined;
- The case concerning the cited trademark has been concluded but the decision has not been taken effect, or the case concerning a cited trademark is waiting to be re-tried under an effective judgement.;
- The prior rights involved must be based on the results of another case that is being tried by a people’s court or that is being handled by an administrative agency; (Note: it is only applied in the cases of review of opposition and invalidation.)
- The status of the cited trademark involved must be based on the result of another case that is being tried by a people’s court or being handled by the administrative agency, and the applicant explicitly requests to suspend the examination; (Note: It is only applied in the case of review of refusal.)
A CNIPA trademark proceeding may be suspended under any one of the following three circumstances:
- If the cited trademark involved in the case of review of refusal has been under an invalidation proceeding, and the registrant of the cited trademark has been found to have bad faith in other cases, the examination may be suspended;
- If it is necessary to wait for the outcome of the similar cases or related cases to be ruled or judged earlier, the examination may be suspended on a case-by-case basis;
- Other situations in which the examination may be suspended.
In the past trademark examination proceedings, the examiners of the CNIPA had very broad discretion to decide whether the suspension request shall be granted. By promulgating Suspension Rules, the CNIPA intends to provide clear guidance to the examiners for granting suspension in the trademark examination and unify the examination criteria on suspension request. For the circumstances clearly listed in the Suspension Rules, it is very likely that the examiners of the CNIPA would grant the suspension request going forward.
However, the Suspension Rules do not clear up the uncertainties as to whether review of refusal should be suspended pending non-use cancellations against the cited marks. It appears that the CNIPA would still grant broad discretion to the examiners for examining the suspension request of review of refusal pending non-use cancellations. Given that the examiners of the CNIPA still have very broad discretion for granting suspension of review pending non-use cancellations against the cited trademarks at this stage, we would recommend filing a backup trademark application to avoid the risks that the CNIPA does not suspend examination of review pending the non-use cancellations and a third party files the mark first.