CNIPA introduces new requirements for suspending trademark reviews in China
The China National Intellectual Property Administration (CNIPA) released a much-anticipated communication on the terms for suspending China trademark review proceedings on June 13, 2023.
Any suspension of trademark review generally needs to adhere to the principle of necessity. As a result, the current procedure will only be put on hold if the future of the previous rights significantly impacts how a case turns out for which the suspension is requested.
Three scenarios can be suspended based on unique case conditions, while seven explicit cases that call for suspension are listed in the communication.
Seven scenarios need a suspension
- The contested/cited trademark is in the process of registering a change (owner, name) which will unify the ownership of the trademarks involved,
- The cited trademark is in the process of being renewed or in the grace period,
- The cited trademark is the subject of a cancellation or withdrawal procedure,
- The cited trademark has been revoked, declared invalid, or has not been renewed, and the date of revocation, invalidation, or cancellation is less than one year from the date of examination of the case,
- The file concerning the cited trademark has resulted in a decision pending taking effect or a judgment pending execution,
- Specifically for opposition and invalidation files, if the prior rights concerned are subject to examination before a court or an administrative authority,
- Specifically for refusal files, if the earlier marks cited ex officio are awaiting a decision and the applicant explicitly requests the suspension of the re-examination.
Three more scenarios are subject to suspension
Depending on the details of the case, the examiner may suspend in one of the following three situations:
- In cases of reconsideration of a refusal, if the cited mark has been the subject of an action for invalidation and if the owner of the cited mark has been found, in other cases, guilty of malicious registration.
- If it is necessary to await a decision or judgment in a prior or related case with identical facts. To coordinate the proceedings, the examiner can decide autonomously whether or not to suspend the proceedings.
- Finally, any other unresolved situations in which the review may be suspended based on the principles of necessity and benefit to legitimate rights holders.
In the future, the CNIPA will aggressively enforce these requirements, allowing for a proper, standard global practice and putting an end to years of random behavior harmful to genuine owners of rights.
***Other Articles***
– You could see How To Register a Trademark in China here.
– You could visit here to see the Procedure of Trademark in China.
– You could visit here to check the Required documents for filing a trademark in China.
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