In order to effectively optimize the allocation of administrative and judicial resources, reduce the administrative and litigation burdens on legitimate rights holders, the Trademark Review and Adjudication Department (“TRAD”) under the China National Intellectual Property Administration (“CNIPA”) has recently released the guidelines regarding the suspension of cases during the examination process.

The guidelines provide seven explicit situations where suspension should be granted and three situations where suspension may be considered and granted based on the specific situations of cases.

Among the seven circumstances that require suspension, five of them are applicable to the review of refusal, review of opposition, and invalidation cases.

Where one of the following circumstances occurred, CNIPA should suspend the examination of on-going procedure upon request of the applicant:

l The disputed trademark or the cited trademark is undergoing a process of name change or assignment by the registrant, and there are no longer any conflicts of rights after the change or assignment.

l The cited trademark has expired and is currently in the process of renewal or within the grace period for renewal.

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

l The cited trademark has been cancelled, invalidated, or has reached the expiration date without further renewal, and the date of decision on cancellation or invalidation occurred less than one year before the examination of the case. Please be noted that if the grounds for refusal do not involve Article 50 of the Trademark Law, there is no need for suspension. According to the Trademark Examination and Adjudication Guidelines, if a cited trademark has been canceled due to non-use for three consecutive years, it shall be handled in accordance with the guidelines.

l A decision in the cases related to the cited trademark and it is awaiting the effectiveness of the conclusion or the execution of an effective judgment for retrial.

The situation specifically applicable to cases of review of opposition and invalidation is as follow, which is consistent with the provisions of Article 35(4) and Article 45(3) of the current Trademark Law.

l The prior rights involved must be based on the results of another case that is under trial by a people's court or that is processed by an administrative authority.

The situation specifically applicable to cases of refusal review is as follows.

l The status of the cited trademark involved must be based on the outcome of another case currently under trial by a people's court or being processed by an administrative authority, and the applicant must explicitly request the suspension of the review.

In cases of refusal review, the applicant must clearly explain the specific details of the suspension, including the trademark number of the cited trademark, the stage of the procedure, and its relevance to the present case. Furthermore, the decision on whether to suspend or not must also adhere to the aforementioned principle of necessity.

There are three situations in which the proceedings can be suspended according to the examiner’s discretion on a case-by-case basis:

l In cases of review of refusal, if an invalidation request has been filed against the cited trademark involved and the trademark owner has been determined to engage in malicious registration practices under Article 4, Article 19(4), Article 44(1), or other provisions of the Trademark Law in another case. Unlike situation (7), it does not require the applicant to request the suspension. The examiner can autonomously decide whether to suspend the proceedings, effectively reducing the burden of repetitive applications and exhaustive legal procedures caused by malicious trademark registrations on legitimate rights holders.

l In cases where it is necessary to await a prior judgment in identical or similar circumstances, the proceedings can be suspended based on the specific circumstances of each case. This situation may not necessarily involve cited trademarks, therefore it does not require the applicant to request the suspension. However, to coordinate the various procedures involved in administrative authorization, unify the standards for examination and review, and to avoid procedural loops resulting from conflicting conclusions, it is within the examiner's discretion to decide whether to suspend the proceedings based on the specific case details.

l There are other situations where the proceedings can be suspended. For cases that are not mentioned above, the examiner can autonomously decide whether to suspend the proceedings based on the specific circumstances of each case.

In conclusion, the new guidelines for suspension of cases during the examination process aim to address long-standing challenges in administrative authorization procedures, coordination between administrative and judicial processes, and the burden faced by legitimate rights holders. By specifying the principles, conditions, and procedures for suspension, the guidelines seek to ensure the protection of the rights and interests of legitimate rights holders while optimizing the allocation of administrative and judicial resources, which can contribute to a high-quality development of the trademark industry, alleviate the administrative, litigate burdens of legitimate rights holders, and promote a harmonious and efficient trademark ecosystem.