On June 13, 2023, the China National Intellectual Property Administration (referred to as the "the CNIPA" below) issued the "interpretation of Conditions for Suspending Review Cases" (referred to as the "Interpretation" below), which specifies seven explicit situations that require suspension and three situations that can be suspended based on specific case circumstances.  According to the Interpretation, except for cases where the trademark examiner actively suspends the examination of trademarks suspected of malicious registration, in other situations of review on refusal cases, the suspension is generally conditional upon the applicant's request.  Similarly, the resumption of examination is also generally conditional upon the applicant submitting relevant proof to confirm the status of the cited trademarks.  The system has been implemented for over a year now, and through our daily handling of cases, we have also discovered many operational guidelines regarding the system's practices.  Although these guidelines are not explicitly stated in the "Interpretation," they do play a role in practice and may evolve and change as the system develops and improves.

    This article will provide a brief overview of the specific situations in which the suspension of proceedings is implemented in review of refusal cases, based on the author's practical experience in handling cases over the past year and a half.

    Firstly, regarding the request for suspension of proceedings, the applicant can apply for suspension either together with the main pleading of the review or separately, just as an independent request.  However, there are some key points to note regarding the deadline for submitting the request for suspension as well as whether evidence of the situation for suspension needs to be submitted:

1) According to the Interpretation, the request for suspension must be submitted no later than the deadline of the three months supplementary period.

2) Although the applicant is required to explain their actions of clearing obstacles posed by the cited marks when requesting for suspension, in practice, simply explaining the actions taken may not be sufficient.  It is more prudent to submit substantial official documents proving the actions taken.  For example, if the applicant intends to assign the cited trademark, but only stating that the assignment negotiations is ongoing as a reason without submitting any official assignment application form or official filing receipt, according to the author's experience, the CNIPA may not suspend. Therefore, based on the above 1) and 2), the submission of specific evidence regarding actions taken against the cited trademark (using official documents or receipts as standards) before the deadline for the supplementary period is crucial for successfully granting a suspension.

    Secondly, in cases where there are multiple cited trademarks but actions should be taken at different timelines, there are some key points to note.  Generally, the principle of suspension is based on necessity.  Only when the determination of prior rights in the case has a substantial impact on the review result, the review process will be suspended.  If other review grounds or the determination of other rights can sufficiently determine the conclusion of the case, the review should not be suspended.

    1) When filing a non-use cancellation against a registered mark, a key condition is whether the trademark has been registered for three years or not.  If some cited trademarks have been registered for more than three years while others have not, theoretically the applicant can request the suspension based on the cancellation of one cited trademark and gradually submit cancellation requests for the others and based on the first non-use cancellation applications, the applicant can request further and further suspension.  But the question is that, will the CNIPA accepts these suspension requests and wait until all of the cited trademarks have been cancelled?  According to our practice, further discussion is needed for this situation:

    As long as the cited marks' conflicting goods are maintained after non-use cancellation examinations against some of the cited marks or no actions have even been taken against them, the CNIPA will not wait for the final status of all of the cited trademarks with the goods in the same sub-classes, because waiting or not does not affect the final conclusion -- there is no need to continue waiting.

    If the cited marks that have been successively filed non-use cancellation, designating conflicting goods in different sub-classes, i.e. different cited marks bar the client's different goods in different sub-classes, according to our practice, the CNIPA tends to wait until the final status of all of the cited trademarks is determined before making a decision, as the final status of the later cancellation against the cited trademarks will affect the final conclusion of the case.

    2) If actions taken against cited trademarks include non-use cancellation and assignments, etc., the same logic as mentioned above applies -- the two prerequisites for the CNIPA to wait for the status of all of the cited marks are stable, before resuming the examination are: first, the applicant timely submits official documents showing the non-use cancellation and assignment, etc. have been taken and timely requests a suspension before the CNIPA, and second, whether the suspension will have a substantive impact on the decision of the case.

    Lastly, it is important to note that although the "Interpretation" stipulates that the CNIPA should theoretically resume the examination of the case based on the applicant's request, in practice, the CNIPA often issues a decision directly after the status of the cited trademarks is determined, without solely relying on the applicant's request for resumption of the examination.  Of course, if the applicant wants to receive the case results as soon as possible, it is still recommended to submit a request for resumption of the examination.

    Also, the above findings are based on the author's daily handling of cases and are not official viewpoints.