In our previous post (here), we talked about a change being proposed by the China National Intellectual Property Administrative (commonly known as CNIPA), prohibiting repeated filings for the same trade mark. This was particularly concerning to brand owners and trade mark practitioners because, presently, it has been common practice to re-file identical back-up applications to deal with prior mark citations, since suspensions or extensions of time of the review process of the original application were not usually granted.
Suspension of Examination
To address the public’s concerns (as well as to reduce the amount of unnecessary administrative litigation caused by the unstable status of prior mark citations, to reduce the applicant’s burden on re-filing, and to save the resources of all parties), the CNIPA recently included new rules on suspending the review and adjudication of trade mark applications in its internal work manual. A notice has just been released (here) setting out its interpretation for situations where a suspension either will, or may, be granted.
The salient points of the CNIPA’s notice are:-
- A suspension will only be granted if it is absolutely necessary. In other words, a suspension should only be granted where the examination process involves the assessment of prior rights and/or other issues which would substantially impact the review of an application.
- There are seven situations where a suspension will be granted. These include, inter alia, situations where (i) the applied-for mark or the prior mark citation is in the process of a change of name or assignment; (ii) the prior mark citation is in the process of being withdrawn; (iii) the status of the prior mark citation is dependent on a case under review / processed by a Court or an administrative department (this should cover situations where the prior mark citation is in the process of being cancelled or invalidated). In particular, if the applicant wishes to request a suspension under the above situation (iii), he can do so by including his suspension request (together with other relevant details) in the appeal against the CNIPA’s refusal.
- There are three situations where a suspension may be granted. These include situations where (a) the prior mark citation is in the process of being invalidated and the prior mark owner was found in other cases to be acting in bad faith; (b) the applicant is awaiting a ruling or decision on a similar case; and (c) other situations where the examiner considers it necessary and exercises his own discretion to grant a suspension.
Even prior to the issuance of this notice, we have seen recent favourable decisions whereby the CNIPA has been willing to suspend the examination of an application in the situations mentioned above. However, for consistency of approach and clarity on current practice, the issue of a written notice on this point is to be welcomed.
From a broader perspective, this is a welcome development from a brand owner’s point of view because it should save costs as well as preserve the seniority status of an application, without the need to devise convoluted filing strategies.
This being said, it should be noted that examiners still ultimately have their own discretion as to whether to grant a suspension. Thus, it may still be prudent to file a back-up application where necessary if the applied-for mark is of great value to the brand owner and budget allows (at least until it becomes established practice among all examiners to grant suspensions in the above situations).