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Suspension of Review for the Refusal Appeal of Trademark Application
Liying MENG
Chinese Trademark Attorney
In June 2023, the China National Intellectual Property Administration (CNIPA) released an article “Interpretation of the ‘Regulations on the Circumstances of Suspension of Review Cases’” (the “Interpretation”) on its official website. This article, in the form of an interpretation, disclosed to the public all contents that can be made public from the “Working System for the Examination and Review of Trademark Review Cases”, which serves as an internal working system of the CNIPA. Specifically, it introduced the principles, circumstances, procedures, and other aspects related to the suspension of trademark review cases. In handling actual cases, the author has found that the refusal appeals for trademark applications are most closely related to the suspension of review cases. One year after the publication of the “Interpretation”, the author, combining publicly available decisions on the refusal appeals of trademark applications and our own practical experience, has compiled a summary of the practical circumstances involving applications for suspension of review in relation to cited trademarks in such refusal appeal cases.
I. Circumstances Applicable to the Suspension of Review for Trademark Refusal Appeal Cases
In trademark refusal appeal cases, the circumstances in which the suspension of review may be applied are listed as follows:
(1) The cited trademark is about to be attributed to the applicant in the case of trademark refusal appeal through change of name or assignment;
(2) The cited trademark has expired and is within the grace period for renewal;
(3) The cited trademark is already in the process of removal of registration or withdrawal of application;
(4) Cited trademarks stipulated in Article 50 of the Trademark Law (i.e. trademarks that have been cancelled, invalidated or not renewed upon expiration, and the date of cancellation, invalidation or removal has not yet been one year at the time of review of the case, but the cited trademarks that have been cancelled due to three consecutive years of non-use are excluded);
(5) The case involved in the cited trademark has already been concluded, only awaiting the decision to take effect or a re-adjudication decision is made based on the effective judgment;
(6) The right status of the cited trademark involved in the case must be based on the outcome of another case being heard by the people’s court or handled by the administrative organ;
(7) The cited trademark involved in the refusal appeal is pending an invalidation, and the registrant of the cited trademark has been found of bad faith in registering trademarks under Article 4, Article 19.4 and Article 44.1 of the Trademark Law in other cases;
(8) It is necessary to wait for a prior decision or judgment of the same or related facts.
Circumstance (6) specifically requires the applicant in the trademark refusal appeal to explicitly request for a suspension of review. On the other hand, circumstances (1) to (5) are explicitly stated as situations where a suspension is mandatory, while circumstances (7) and (8) are situations where a suspension may be considered based on the specific circumstances of the case. Generally, for circumstances (7) and (8), it is not a prerequisite for the applicant in the refusal appeal to request a suspension; the examiner can directly suspend the review at their own discretion. However, if a change in circumstances regarding the cited trademark occurs after the rejection of the trademark application, in order to avoid the circumstance that the examiner fails to detect it in a timely manner, it is still recommended to proactively introduce the latest situation and apply for a suspension of review during the refusal appeal.
II. The Determination by Official Authorities on the Application for Suspension of Review from Specific Cases
The application for suspension of review shall be based on the principle of necessity. Suspension should only be granted when the determination of prior rights or other circumstances in the review has a substantial impact on the outcome of the case. In cases where other grounds for review or other prior trademarks with determined right status are sufficient to establish the conclusion of the case, suspension of review should not be granted. The author will explain further by publicly available decisions on the refusal appeals.
The designated goods of Cited Mark 1 only conflict with the goods “hats” designated by the applied-for mark. As the applicant has withdrawn the application on the designated goods “hats” in the refusal appeal, the conflict with Cited Mark 1 is thus eliminated. Therefore, in this case, the actual number of cited trademarks has been reduced to two.
The exclusive registration period of Cited Mark 2 is until December 13, 2022, and it was not renewed upon expiration, which is a cited trademark stipulated in Article 50 of the Trademark Law, and falls under the above-mentioned circumstance (4) applicable to a suspension of review. In the meanwhile, Cited Mark 3 is in the process of cancellation action, which is the circumstance (6) where the suspension of review is applicable. In this case, the applicant applied for a suspension of review based on the circumstances of Cited Marks 2 and 3.
Due to the reasons that the two cited trademarks were subject to the suspension of review and the applicant took the initiative to apply for a suspension, the examiner finally granted the suspension and decided to preliminarily approve the application of the applied-for trademark with respect to the goods claimed for review after confirming the final status of the two cited trademarks.
In the refusal appeal stage, the applicant requested a suspension of review based on the fact that the registration application for the cited trademark had been rejected, and if the rejection were to take effect, it would no longer constitute an obstacle to the registration of the applied-for mark. In the meanwhile, in this case, there was also an absolute ground for rejection related to unwholesome influence. According to the refusal appeal decision, the examiner determined that the applied-for trademark did not constitute the circumstance stipulated in Article 10.1.(8) of the Trademark Law. Therefore, upon confirming that the rejection against the cited trademark has taken effect, the examiner preliminarily approved the applied-for trademark with respect to the reviewed services.
However, assuming that the examiner had determined that the application for registration of the applied-for trademark constituted the circumstance stipulated in Article 10.1.(8) of the Trademark Law, the status of the cited trademark would not have had a substantial impact on the outcome of this case. In such circumstance, it would not be necessary to suspend the review, and an unfavorable refusal appeal decision would be issued promptly.
The application of Cited Mark 3 has been withdrawn, Cited Mark 4 is under trademark examination process, and the rejection against Cited Mark 5 is awaiting the entry into force. The circumstances respectively correspond to the above mentioned circumstances (3), (6) , and (5) applicable to a suspension of review. In light of the status of the cited trademarks, the applicant in this case requested a suspension of review.
However, due to the existence of Cited Marks 1 and 2, which are under a stable right status, the final status of the aforementioned three cited trademarks will not bring a substantial influence to the decision of this case. Therefore, the examiner did not accept the applicant’s request for a suspension and directly decided to reject the trademark application with respect to the reviewed goods.
III. Conclusion
Based on the author’s own practice experience and the examples of refusal appeal decisions listed in this article, the following may be summarized for your reference.
(1) If the rejection of the applied-for trademark is solely based on cited trademarks, and all of the cited trademarks fall under the circumstances applicable to a suspension of review, there is a higher likelihood that the request for a suspension will be granted.
(2) If some of the cited trademarks do not fall within the scope of circumstances applicable to the suspension of review, and the similarity of trademarks is of high level; or although the cited trademark falls within the scope of circumstances applicable to the suspension of review, there are also absolute grounds for rejection that are difficult to overcome, such as lack of distinctiveness, misidentification of quality, or unwholesome influence, the application for suspension of review is likely to be deemed unnecessary and therefore not granted.
(3) An application for suspension of review shall be filed within the prescribed time frame. In the case of a trademark refusal appeal, the application shall be filed no later than the three-month supplemental submission deadline from the filing date of the refusal appeal. If an application for a suspension of review is filed after the above time limit, it is likely that it will not be accepted.
(4) It is not necessary to submit an application for suspension of review separately. It is sufficient to assert it as one of the arguments for refusal or supplementary arguments, clearly stating the specific circumstances of the cited trademark including the registration number, the procedure involved, and the relationship with the case. Please however note that the official authority will not inform whether the application for suspension is granted or not. We can only speculate based on whether a review decision has been issued within the normal review period for a refusal appeal.
(5) Once the status of the cited trademark right is determined, the applicant should submit the corresponding evidence materials. If the examiner receives the applicant’s supplementary evidence and confirms that the grounds for suspension have been eliminated, the review should be resumed. In practice, although the author has encountered cases where the examiner directly issued a review decision after independently discovering changes in the right status of the cited trademark, considering the vast number of trademark cases in China, it is likely that the examiner may not be able to promptly notice the changes in the circumstances of each case. Therefore, if the status of all cited trademarks involved in the suspension of review has been determined, it is recommended that the applicant submit relevant materials to the authority, explaining the situation and requesting a prompt resumption of the hearing.
