The State Intellectual Property Office triggered an interpretation of the "Regulations on Suspension of Trademark Review"-Industry News-Shenzhen deep trust patent Agency Co., LTD

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The State Intellectual Property Office triggered an interpretation of the "Regulations on Suspension of Trademark Review"

Release Time：

2023-06-13

These 7 situations clearly require the suspension of trademark review, and the other 3 situations require suspension depending on the specific circumstances of the case!

In the recently issued "Trademark Review Case Review and Trial Working System", a new "Standard for Suspension of Review Cases" has been added based on the actual review work. In order to facilitate the understanding and application of trademark review personnel and the parties involved in review cases, the interpretation is as follows:

1. Develop ideas and considerations

The first is to actively respond to social concerns, and from the perspective of benefiting legitimate rights holders, solve long-term problems such as lack of coordination between administrative authorization and confirmation procedures and between administrative procedures and judicial procedures, situation changes, idle procedures, and cases based on cases. Practical difficulties, reduce the burden of legal rights holders to repeatedly apply and repeatedly exhaust legal procedures in order to avoid having to apply for trademark rights after the obstacles to citing trademark rights are cleared, reduce unnecessary institutional costs for legitimate rights holders to obtain exclusive rights to trademarks, and ensure The setting of trial limits in the Trademark Law returns to the original intention of the legislation to promote the timely authorization and confirmation of trademark rights of legitimate rights holders.

The second is to coordinate with the management of judicial proceedings and litigation sources. If a party involved in a rejection review case is dissatisfied with the rejection decision and files an administrative lawsuit, the Beijing Intellectual Property Court will adopt pre-litigation mediation measures for certain cases where the status of cited trademark rights is pending. According to current statistics, the trial period for opposition and invalidity is generally one to six months longer than the rejection review period, and the withdrawal trial period is generally similar to the rejection review period. This time difference means that during the pre-litigation mediation period, the rejection review cited trademark There is a high possibility that the rights status will change, so it is very necessary to moderately suspend the rejection review trial to save the resources of the parties, administrative and judicial parties.

The third is to comply with laws and regulations. The basis for formulating the specifications includes not only the suspension provisions of Article 35, Paragraph 4 and Article 45, Paragraph 3 of the current Trademark Law regarding the suspension of review and invalidation procedures for non-registration; the current Trademark Law Article 11 of the Regulations for the Implementation of the Trademark Law stipulates that circumstances that will not be included in the trial limit are not counted; it also refers to the circumstances of the suspension of civil litigation and relevant legal provisions, as well as the recommendations on amending the Trademark Law to clarify the rejection of review suspension procedures and the Trademark Law The proposed amendments to Article 11 of the Implementation Regulations.

The fourth is to ensure feasibility. After the implementation of the standards, the proportion of suspended cases will increase significantly. To cope with this change, on the one hand, the online application rate of review cases has increased to more than 80%, and the space for storing case files has been released; On the one hand, it is necessary to fully respect the wishes of the parties involved. Whether a case of rejection review is suspended requires the applicant to submit an application for suspension (except when the cited trademark is suspected of being registered in bad faith and the examiner actively suspends it). In principle, the resumption of the trial also requires the applicant to submit corresponding evidence and materials. Determination of the cited trademark rights status is a necessary condition. The suspension application here does not require a separate application. Waiting for the results of cases related to cited trademarks is often one of the main reasons for review by the applicant. The results of cases related to cited trademarks and whether the suspended cases can be resumed are also the most important thing for applicants. Pay attention to the progress.

Fifth, the standards are unified. In the past, the statement of "can" suspension was inevitably inconsistent in actual implementation. The current standard has revised the suspension situations that can be unified to the statement of "should" suspension, thereby reducing the room for discretion in implementation.

2. Specific content of the specification

The first is the principle of suspension, that is, based on the principle of necessity, the trial will be suspended only if the determination of prior rights and other circumstances during the trial have a substantial impact on the outcome of the trial; other reasons for review or other prior trademarks with confirmed rights status are sufficient. Once the conclusion of the case is determined, the trial should not be suspended.

The second is the circumstances of suspension. The specification stipulates seven circumstances in which suspension is clearly required and three circumstances in which suspension may occur depending on the specific circumstances of the case. Among the situations that should be suspended, there are five types that are generally applicable to cases of rejection review, non-registration review and invalidation declaration cases, namely:

(1) The disputed trademark or cited trademark is in the process of changing or transferring the name of the registrant and there is no longer a conflict of rights in the disputed trademark or cited trademark after the change or transfer;

(2) The cited trademark has expired and is in the renewal process or the extension period;

(3) The cited trademark is in the process of cancellation or withdrawal of application;

(4) If the cited trademark is revoked, declared invalid or not renewed upon expiration, the date of cancellation, invalidation or cancellation is less than one year when the case is heard; it should be noted that the reason for rejection does not involve the Trademark Law Article 50, there is no need to suspend; according to the "Guidelines for Trademark Examination and Trial", if the cited trademark is revoked due to suspension of use for three consecutive years, the guidelines shall be followed;

(5) The case involving the cited trademark has reached a conclusion and is waiting for the conclusion to take effect or the execution of the effective judgment is waiting for re-adjudication.

There is one situation that is specifically applicable to cases of denial of registration review and invalidation declaration, which is consistent with the provisions of Article 35, paragraph 4, and Article 45, paragraph 3, of the current Trademark Law, namely:

(6) The prior rights involved must be based on the outcome of another case that is being heard by the people's court or being handled by the administrative agency;

There is one type that is specifically applicable to rejection review, namely:

(7) The rights status of the cited trademark involved must be based on the results of another case that is being heard by the people's court or being handled by the administrative agency, and the applicant has clearly made a request to suspend the trial;

Here, in order to realize the original intention of benefiting the legitimate rights holders to the greatest extent, the time of application and the applicant for cases related to cited trademarks will no longer be distinguished. However, the applicant for rejection review cases should clearly state the registration number of the cited trademark involved in the suspension and the procedures involved. , relationship with the case and other specific circumstances, and whether it should be suspended must also meet the aforementioned principle of necessity.

There are three circumstances under which suspension can occur, namely:

(8) The cited trademark involved in the rejection review case has been subject to a request for invalidation, and the registrant of the cited trademark has been found to constitute a violation of Article 4, Article 19, Paragraph 4, and Article 40 of the Trademark Law in other cases. In cases of malicious registration such as Article 4, Paragraph 1, etc., the trial may be suspended; the difference between this situation and the above situation (7) is that it does not require the applicant to submit an application for suspension, and the examiner can independently decide whether to suspend based on the specific circumstances of the case, thereby effectively Reduce the troubles caused by maliciously registered trademarks to legitimate rights holders such as repeated applications and exhaustion of legal procedures.

(9) If it is necessary to wait for a previous ruling or judgment on the same case or a related case, the trial can be suspended according to the needs of the individual case; this situation does not necessarily involve the cited trademark, so it does not require the applicant to file a suspension application as an essential condition, but for the sake of coordination Administrative authorization and confirmation procedures, as well as administrative procedures and judicial procedures, unify review and trial standards, avoid procedural loops caused by conflicting conclusions, and effectively reduce the burden on the parties. The examiner can independently decide whether to suspend based on the specific case circumstances.

And (10) other circumstances in which the trial can be suspended. For circumstances that cannot be exhausted, the principle of necessity and benefit to legitimate rights holders, and the above circumstances as a reference, the examiner can decide whether to suspend the case independently based on the specific circumstances of the case.

The third is the procedure for suspension. The specification clearly stipulates the time limit requirements and channels for applying for suspension, and the necessary conditions for resuming the trial after the suspension situation is eliminated. In order to ensure the rights and interests of legitimate rights holders, while taking into account efficiency and fairness as well as the stability of the trademark registration order, the examiner's application to suspend the hearing of the case should be submitted within the prescribed time range; the applicant for the rejection review case should also file a rejection no later than the examiner. During the three-month supplementary material period from the date of the reexamination application, the applicant shall explain in writing the actions it has taken to remove rights obstacles to the cited trademark.

If the above situation (7) requires the applicant of the rejection review case to make a clear request for suspension of the review, it can be made together with the reasons for rejection of review. The request for suspension of review should state the registration number of the cited trademark involved, the procedure, the relationship with the current case, etc. Condition. In principle, whoever applies to suspend the trial shall apply to lift the suspension. After the rights status of the cited trademark is determined, the applicant should submit corresponding evidence materials. If the examiner receives the applicant's supplementary evidence and confirms that the suspension has been eliminated, the trial will be resumed.

After the above-mentioned suspension situations are eliminated, the examiner shall conduct the review according to the factual status at the time of review, and shall conclude the case in accordance with the prescribed time limit.

In the future trials of trademark review cases, we will strictly implement all contents of the "Standards for Suspension of Review Cases"; further improve the content of the rules based on practice, give full play to the role of administrative procedures in determining points and ending disputes, and effectively optimize administrative resources and judicial Allocate resources to reduce the burden of administrative procedures and litigation burdens on trademark authorization and confirmation for legal rights holders, "people call me to do it", comply with public opinion, do practical things, and promote the high-quality development of the trademark industry.

(Writer: Duan Xiaomei)

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