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Trademark practice - when a suspension request could be accepted?
Time: 2021-03-20
Trademark practice - when a suspension request could be accepted?

Mango Shufang PENG | Mar 2021

The efficiency of China's trademark examination has improved considerably in recent years, and it is no longer a lengthy process but a speedy outcome that bothers applicants nowadays. One of the most frequently asked questions is “when a request for suspension could be accepted?” We summarize the following points as per current practices for reference.

1. In reviews of refusals
Despite the rising number of trademark reviews of refusals filed to the Trademark Review and Adjudication Board (TRAB), we are receiving outcomes faster than before, largely due to the time frame set by the Trademark Law for the conclusion of cases. Such that, the TRAB is less likely to accept suspension of reviews pending for outcomes of cancellation/invalidation actions against cited marks except in the following circumstances:

(a) The cited trademark(s) has/have been in non-use cancellation procedures or invalidation procedures prior to the application date of the trademark in question;
(b) The cited trademark(s) has/have been in opposition procedures;
(c)The cited trademark(s) has/have been in change/renewal/assignment procedures.

2. In oppositions, opposition reviews, and invalidation
First of all, we need to appreciate that oppositions and opposition reviews/invalidation are heard by two different departments. The former is heard by the Trademark Office (TMO) and the latter by the Trademark Review and Adjudication Board (TRAB), both of which are now under the management of the China National Intellectual Property Administration (CNIPA). There are differences in scale between the two departments on the issue of whether to accept a request for a suspension.

The Trademark Law does not provide for a suspension of examination scenario applicable to opposition proceedings, so we can reasonably expect that the Trademark Office will not readily accept a request for a stay. That said, there is no express provision in the Trademark Law that prevents a stay, so the opposing party could request one if it has good reasons.

However, the Trademark Law has a prerequisite for a suspension of examination in relation to opposition review and invalidation proceedings, namely that (in prior-rights-based opposition/invalidation proceedings) the establishment of prior rights involved must be determined by the outcome of another case. This may seem like a bit of a tongue twister, but to put it more plainly, it means that the prior rights are in a precarious state.

A common ground for initiating opposition review or invalidation proceedings is a conflict with prior rights. The TRAB will most likely accept a request for a suspension if the prior rights satisfy both of the following conditions.

(a)The prior right is decisive for the case to be heard. If the case can be decided by an absolute ground, then the TRAB will not suspend the case.
(b)The prior right is in a precarious state. If the prior right is in a dispute, but whatever the outcome of that dispute does not affect the case at hand, then the TRAB will not suspend the case.

In general, under the current climate of improving quality and efficiency and balancing efficiency and fairness, all departments are much more prudent than before in relation to the suspension of examination, and we should actually try to avoid scenarios where we need one.

Applicants should adopt proper strategies, such as having pre-filing searches to avoid refusals, broadening the breadth and depth of the trademark portfolio to avoid unnecessary opposition and invalidation.

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