Applicable circumstances for postponement of examinations of administrative trademark cases

LI Bing, Unitalen Attorneys at Law,[Trademark]

 

As is known to all, China is a veritably big country in trademark, and the number of trademark applications has ranked first in the world for many years. In line with the increasing number of trademark applications, the number of trademark granting and confirmation cases such as review of refusal, cancellation, opposition, and invalidation has repeatedly reached record highs. With the increasing number of various trademark cases, the conflict of trademark rights is inevitable. Therefore, there are more and more cases in which administrative and judicial organs are requested or hoped to suspend or postpone the examination.

There are many procedures involved in the trademark cases, and problems, for example, for which procedures can the postponement of examination be requested, on what causes in fact can the request be based, and under what circumstances the request may be accepted by the authority, often perplex the parties in the case. Based on different trademark procedures, this article will give a general introduction to the applicable circumstances of the postponement of examination of administrative trademark cases in combination with legal provisions, administrative policies, and trademark practices.

I. Procedure of review of non-registration in opposition and procedure of invalidation

Article 35, Para.4 of the Trademark Law provides that "where, in a review conducted according to the preceding paragraph, the Trademark Review and Adjudication Board must determine the involved prior rights based on the results of another case being tried by a people's court or handled by an administrative organ, it may suspend the review. After the cause of suspension is eliminated, the review process shall be resumed." The expression "a review conducted according to the preceding paragraph" herein refers to the procedure of review of non-registration in opposition. Namely, where the Trademark Office makes a decision of disapproval of registration in an opposition procedure and the opposed party is not satisfied, he may apply to the Trademark Review and Adjudication Board (hereinafter referred to as "the Board") of China National Intellectual Property Administration for a review.

The above provisions specify the circumstances for the postponement of examination of review of non-registration in opposition. To put it simply, in the opposition procedure, the opposing party often cites its previously applied or registered trademark or design patent rights, copyrights, and the like as prior rights. If, at the stage of review of non-registration in opposition, the prior right is in other administrative or judicial procedures, resulting in an unstable state of the right, the opposed party can request the postponement of examination for review of non-registration in opposition on this basis.

But there are a few points to benoted. Firstly, it is the procedure of review of non-registration in opposition that is stipulated by the law, and there is no statutory circumstance for suspension of examination in the opposition procedure prior to the review procedure. However, it is not that if the prior right is unstable, the examination will definitely not be postponed in the opposition procedure. It only means that the Trademark Office can determine according to the specific situations. The opposed party can actively put forward a request for postponement of examination if such request is reasonable. There are also cases of allowing postponement in practice. However, it should be explained that neither the Trademark Office nor the Board will issue any official notice on the request for postponement, regardless of whether the postponement is agreed or not.

Secondly, the law makes it clear that the premise for suspension of review is that the determination of the involved prior right must be based on the result of another case. That is to say, the prior right must affect the examination of the case and is in an unstable state. In other words, if the case of review of non-registration in opposition can be ruled directly on absolute grounds, or if the prior right is in other procedures but the result thereof does not affect the examination of the case, or the result of the decision will not be affected even if the examination is conducted only based on other prior rights which are in a stable state, the Board may make a decision directly without suspending the review.

Thirdly, the law provides that "it may suspend the review", which indicates that the Board has the power to decide whether to suspend the review. Such provision is appropriate because it can effectively avoid the abnormal delay in the examination caused by the abuse of the request for suspension by the opposed party. From the perspective of practice, the Board will generally consider whether there are disputes and uncertainties in the determination and ownership of the prior rights, the progress of the case involving the prior rights, and whether the prior rights affect the examination result of the case, and other factors, and then decide whether to suspend the review.

In addition, for the invalidation procedure, Article 45, Para.3 of the Trademark Law provides the same provisions on suspension of review as those in the procedure of review of non-registration in opposition. Therefore, for the postponement of the examination of the invalidation procedure, the above introduction to the procedure of review of non-registration in opposition can be referred to.

II. Procedure of review of refusal

Refusal of trademark registration applications is quite common due to the huge amount of trademarks in China, which correspondingly brings a large number of cases of review of refusal. In cases of review of refusal involving relative grounds, there is not much dispute over trademark similarity and goods similarity in many cases, so it is very common to overcome prior rights by initiating a cancellation, opposition, and invalidation to the cited trademarks or by presenting that the cited trademarks are in the procedures such as change of name/address, assignment or renewal. Therefore, the request for postponement of examination in the procedure of review of refusal is the circumstance most commonly applied and discussed relating to the topic of postponement in practice, and is also more concerned by trademark applicants.

Different from the procedures of review of non-registration in opposition and invalidation, whether the procedure of review of refusal can be suspended is not clearly prescribed in the Trademark Law. Therefore, this problem has plagued trademark applicants and agents for a long time, and there is a lack of relatively clear solutions. However, after years of examination and exploration, the Board has gradually made the solutions to the problem clear. In the 72nd issue of the Legal Newsletter (edition of June 2018), the Legal Affairs Office of the Board once wrote: "the cases of review of trademark refusal will not be postponed in principle except for the following circumstances: (1) prior to the application for trademark registration, the cited trademark has been in the cancellation procedure or invalidation procedure due to non-use in three consecutive years; (2) the cited trademark is in the opposition procedure; and (3) the cited trademark is in the procedure of change of name/address, renewal or assignment".

The Board also gave corresponding explanations for the above practices in the article: "there is a requirement on the examination period for review and adjudication cases in the Trademark Law, but in recent years, the acceptance of trademark review and adjudication cases has increased year after year, with the cases of review of refusal as the most, and the examination efficiency of review and adjudication cases is under great pressure. If we wait for the status of the cited trademark to be finally determined in all cases of review of refusal, it will bring great difficulties to the management of the review work." That is to say, the Board makes a relatively appropriate trade-off and choice between efficiency and fairness according to the actual circumstances, which not only meets the normal and reasonable expectation for the postponement of trademark applicants to a certain extent, but also does not generally lower the granting efficiency due to the large-scale suspension of review. In addition, to a certain extent, the setting of postponement requirements also urges trademark applicants to do a good job of searching for the prior rights before filing an application and avoids the shortage of examination resources caused by the abuse of cancellation procedure.

The Board also referred to judicial practice when setting the above postponement requirements. In the administrative litigation cases of review of refusal, for the request for postponement of examination, the court usually holds in judgment that the trademark granting case is mainly to review the legality of the sued decision, and the applicant's request for postponement of examination on the basis that the cited trademark is in the procedure such as cancellation is not the natural reason for the postponement of examination in the administrative litigation cases of review of refusal. Therefore, in practice, the court's examination also gives priority to efficiency, and in most cases, the court does not suspend the examination. If the final status of the cited trademark can be determined during hearing the case by the court, the court will make a judgment based on the principle of change of circumstances.

In spite of the above restrictions on request for postponement, the applicant could react with a combination of tactics,, that is, submit a new backup application while filing a review of refusal and taking measures against the cited trademark, and then continue to initiate the proceedings of first instance, second instance and even retrial against the ruling of the review of refusal to wait for the final determination of the status of the cited trademark, and meanwhile, the pending review procedure and actions against the cited trademark shall buy time for the new backup application. Therefore, in order to alleviate the shortage of review resources and solve the dilemma of intertwined submission of procedures, it is still necessary to effectively curb and clean up malicious registration, and at the same time make more institutional arrangements in the use of trademarks, just like the attempt made when the Trademark Law was revised in 2019. Only in this way, can more resources and opportunities be provided to commercial entities who seek legitimate trademark right protection.

III. The substantive examination procedure for trademark application

From the perspective of current practice, the Trademark Office has also introduced the form of Office Action to the substantive examination of trademark application, enabling the applicant to decide whether to request a postponement of examination. The main content of such Office Action is as follows: the Trademark Office intends to refuse the trademark application based on a prior right; however, since the prior right is in a certain procedure, the applicant is asked to decide whether to request a postponement of examination; and if wanting the postponement, the applicant is required to submit a written application for postponement.

According to the Chinese Standards for Trademark Examination, Review and Adjudication , when it is really necessary, the Trademark Office may issue an Office Action asking the applicant to explain some circumstances of the trademark application. Objectively speaking, putting the postponement forward to the substantive examination stage of the application for registration largely avoids the occurrence of follow-up review procedures and promotes the substantive settlement of disputes, thereby saving the administrative examination resources and the granting cost of the applicant.

Moreover, from the perspective of practice, the causes for postponement considered by the Trademark Office in the Office Action are substantially the same as those for postponement considered by the Board in the procedure of review of refusal as mentioned above.

However, due to factors such as the pressure brought by the number and time limit of examination, the Office Action is not commonly applied at present.

Conclusion

This article mainly introduces and discusses the specific types of cases that can be postponed in trademark administrative cases and the circumstances of the application of postponement. In the above-mentioned procedures and other procedures, there are also some other causes for postponement, such as requesting for the postponement of examination of review cases of refusal based on a consent, and requesting for the postponement of examination of opposition cases based on a trademark assignment, etc. Such requests for postponement are also quite common in practice, and many of them have been approved by the Trademark Office and the Board. However, due to lack of clear legal basis or administrative policies , this article does not reach every aspect of the matter. In addition, the administrative investigation and civil litigation cases of trademark infringement also provide room for application of the request for postponement. Proper understanding and application of the rules for postponement can help the applicants safeguard their trademark rights more efficiently and economically.

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