MarkIt to Market® – August 2023: Happy to Wait! New Rules Allow for Suspension of Trademark Review Cases in China | Sterne, Kessler, Goldstein & Fox P.L.L.C.
As we previously reported, in January of this year, the China National Intellectual Property Administration (CNIPA) published its Draft 5th Amendment to the Chinese Trademark Law. See here. One of the proposed amendments no longer allows for (or limits) refiling of trademark applications, including in situations where subsequent new applications are required to preserve rights during pendency of actions against prior, third-party blocking marks. This proposal elicited groans of concern from brand owners and trademark practitioners alike, because the CNIPA does not coordinate timelines between trademark prosecution and cancellation or other actions. In practice, this means that a refusal to register based on a prior mark is often finally decided against the applicant well before an action to remove the cited mark is taken-up by the CNIPA or other authority. In order to preserve rights, applicants routinely need to file both expensive appeals and subsequent new applications for the same mark in order to preserve rights in China.
That groan of concern is now a sigh of relief as the CNIPA recently published an Interpretation of the Rules for Suspension of Review Cases, which allows for suspension of a pending trademark review case (e.g., review of a refusal to register, opposition proceeding, or invalidation proceeding). The Rules, which are thankfully now in effect, set forth seven scenarios for mandatory suspension and three scenarios where suspension may be considered by an Examiner.
In general, one or more scenarios take into consideration pending transfers of ownership of cited trademarks; the status of cited trademarks in withdrawal, cancellation, opposition, or invalidation proceedings; the status of cited trademarks that are subject to renewal; and the status of a cited trademarks dependent on other review, administrative, or court proceedings. Applicants are required to submit requests within three months of filing for review of the refusal to register, along with a written statement of the action(s) taken to remove the cited trademark. Once the status of a cited trademark has been confirmed (e.g., the cited trademark has expired or has been invalidated), a request for removal of suspension should be filed to resume examination of the suspended trademark matter.
It is expected that the new rules will result in an increased number of suspensions, which will, in turn, reduce the number of refiled applications, appeals, etc., resulting in cost savings and improved rights procurement for brand owners in China. As the CNIPA continues to work on amendments to its Trademark Law, brand owners may wish to discuss with counsel whether suspensions could and should be requested to better meet the brand’s trademark procurement and budgeting objectives in this jurisdiction, particularly since the requirements for suspension are both varied and specific.
