The "Regulations on the Suspension of Review Cases" has been published approximately five months ago, and some enterprises and agencies have already begun incorporating its provisions into their strategies. This article discusses and explains how to practically approach and effectively apply these new guidelines.

Clarifying the "Regulations on the Suspension of Review Cases" specific application conditions:

• Suspension in cases of Review of Refusal, Review of Registration Refusal, and Invalidation Declaration

1. The disputed trademark or cited trademark is undergoing a change of ownership or transfer procedure, and after the change or transfer, there is no longer a conflict of rights with the disputed or cited trademark;

2. The cited trademark has passed its validity period and is in the process of renewal or extension;

3. The cited trademark is in the process of cancellation or withdrawal of application;

4. The cited trademark has been revoked, declared invalid or is not renewed upon expiration, but at the time the new application undergoing its substantive examination, one year has not yet elapsed since the date of revocation, declaration of invalidity or cancellation.

5. The case involving the cited trademark has reached a conclusion, awaits the effective conclusion to take effect, or the execution of an effective judgment awaits for a decision to be re-issued.

• Suspension Applicable to Review of Refusal

The status of the cited trademark must depend on the results of another case being tried in the People's Court or handled by an administrative authority. The applicant must explicitly request the suspension of the proceedings.

• Suspension Applicable to Review of Registration Refusal & Invalidation Declaration

The prior rights in question must be depend on the outcome of another case being tried in the People's Court or handled by an administrative authority.

The changes in the dynamics of the current examination process are primarily based on the context of trademark review procedures operating in isolation and a lack of coordination between the administrative and judicial procedures. The objective is to reduce the procedural burden on legitimate rights holders and minimize the unnecessary institutional costs incurred by them when trying to obtain trademark rights. The suspension of the review process can, on the one hand, reduce the ineffective stacking of a large number of trademark and review applications and, on the other, reduce the number of unnecessary administrative litigation cases which, to a certain extent, could alleviate some of the pressures placed on the judicial system.

 

For businesses, the most practically significant development concerns the Suspension of Examination for Review of Refusal cases. With the implementation of the "Regulations on the Suspension of Review Cases", the old strategy of acquiring trademark rights through repeated applications and Reviews of Refusal is coming to an end. Listed below are some considerations businesses can take into account to adapt to the new procedures and effectively apply the new rules:

 

1. Deciding whether to take precautionary actions against prior identical, highly similar, or less similar marks
With the introduction of the "Regulations on the Suspension of Review Cases", businesses have the opportunity to take proactive steps against identical or highly similar pre-existing trademarks, either before or during the application process for a new trademark.

 

While most enterprises already conduct risk assessments before trademark applications, accurately predicting the actual examination outcomes can be challenging. The difficulty arises from the subjective nature of determining what constitutes a similar trademark. Deciding whether to take precautionary actions against prior identical, highly similar, or less similar marks still remains a highly complex and nuanced issue.

 

Now, with the Regulation in effect, businesses can consider the following situations:

(1). Identical or Highly Similar Marks: If risk assessments identify identical or highly similar marks, companies can proactively address them before or after submitting their new trademark application. Should these actions be taken after the official refusal notification, examiners can, in accordance with the Regulation, temporarily suspend the review of the rejection.

(2). Less Similar Marks: It's generally advisable not to take precautionary actions against less similar marks but, instead, to proceed with the trademark application. Companies can address these less similar marks after receiving the official Notification of Refusal from the China National Intellectual Property Administration (CNIPA), which will specify the prior similar marks cited against the new application. Subsequently, companies can request the suspension of the review process while awaiting the outcome of their actions against less similar marks.

 

2. For cases where a Review of Refusal has already been submitted and meets the criteria for suspension, promptly submit a Suspension of Examination Request.

According to the requirements of the "Regulations on the Suspension of Review Cases", the Review of Refusal applicant must provide a written explanation of the actions they took against the cited trademark and submit a Suspension of Examination Request no later than three months from the date their application for Review of Refusal was submitted.

 

3. Succinctly provide your Review of Refusal arguments, fully elaborate only on the disputed points, and reduce content related to the enterprise's own reputation.

The Suspension of Examination for Review of Refusal suggests that the applicant suspending the procedure must be the one to resume it when the status of the cited mark is determined. However, it should be noted that the current Review of Refusal online system has a maximum capacity of 50MB for document and evidence submission. It is recommended, therefore, that for cases where a Suspension of Examination Request is submitted, some space should be reserved for the applicant to subsequently submit the documents requesting the application examination to resume.

 

Conclusion

The implementation of the "Regulations on the Suspension of Examination Cases" effectively helps enterprises reduce the number of repetitive applications but also extends the examination time for individual trademark cases. For brands with more urgent market expansion needs, further specific analysis and consideration might be required. In extreme cases, it's possible that both the Review of Refusal and the cited trademark might be suspended concurrently, leading to a further delay in the examination time. These are issues that will require additional discussion with the clients and a more tailored and fact specific strategy.