1、 It is a positive response to social concerns
From the perspective of benefiting legitimate rights holders, we aim to address the lack of coordination between various procedures for administrative authorization and confirmation, as well as between administrative and judicial procedures, as well as the long-standing difficulties of changing circumstances, idle procedures, and cases arising from cases. We aim to reduce the burden of legal rights holders repeatedly applying and exhausting legal procedures in order to avoid the obstacles to citing commercial rights being cleared and others applying first, Reduce the unnecessary institutional costs of obtaining trademark exclusive rights for legitimate rights holders, and ensure that the review limit set by the Trademark Law returns to the legislative intention of promoting timely authorization and confirmation of trademark rights for legitimate rights holders.
2、 It is coordinated with the governance of litigation sources in judicial procedures
If the parties involved in the rejection review case are not satisfied with the rejection decision and file an administrative lawsuit, the Beijing Intellectual Property Court adopts pre litigation mediation measures for certain cases where the status of the cited trademark rights is uncertain.
According to current statistics, the trial cycle for protest and invalidity is generally one to six months longer than that for rejection and reply, and the trial cycle for withdrawal is generally similar to that for rejection and review. This time difference also means that there is a greater possibility of changes in the status of trademark rights cited in rejection and review during the pre litigation mediation period. Therefore, it is very necessary to moderately suspend the rejection and review trial, saving resources for parties, administrative, and judicial parties.
3、 It is in accordance with the law and regulations
The basis for the formulation of regulations not only includes the suspension provisions of Article 35 (4) and Article 45 (3) of the current Trademark Law regarding the procedures for non registration review and invalidation; The provisions of Article 11 of the current Regulations on the Implementation of the Trademark Law regarding situations not included in the review limit;
We also referred to the situation of suspension of civil litigation and relevant legal provisions, as well as the proposed content of the amendment to the Trademark Law, which clearly rejects the suspension procedure for reexamination, and the proposed content of the amendment to Article 11 of the Implementation Regulations of the Trademark Law.
4、 To ensure feasibility
After the implementation of the regulations, the proportion of cases that have been suspended for trial will significantly increase, and this should be changed. On the one hand, the online application rate for review cases has been fully increased to over 80%, and the space for storing case files has been released; On the other hand, it is necessary to fully respect the wishes of the parties involved, and whether the rejection of the reexamination case is suspended is a necessary condition for the applicant to apply for suspension (except for cases where the cited trademark is suspected of malicious registration and the examiner voluntarily suspends). In principle, the resumption of the trial is also determined by the applicant submitting corresponding evidence and materials to prove the status of the cited trademark rights.
The suspension application here does not require a separate application. Waiting for the results of the cited trademark related case review is often one of the main reasons for the applicant's review. The results of the cited trademark related case review and whether the suspension case can be resumed are also the most important developments that the applicant pays attention to.
5、 Unified standards
The previous expression of "can" be suspended is inevitably inconsistent in actual execution. Now, the standard has revised the unified suspension situations to the expression of "should" be suspended, thereby reducing the discretionary space in execution.
2、 Specific content of the specification
One is the principle of suspension, which is based on necessity. Only cases involving the determination of prior rights during the trial that have a substantial impact on the trial results can be suspended; If other reasons for evaluation or other rights determined by the prior trademark are sufficient to determine the conclusion of the case, the trial should not be suspended.
The second is the situation of suspension, which stipulates seven clear situations that should be suspended and three situations that can be suspended depending on the specific circumstances of the case.
Among the situations that should be suspended, there are five universally applicable cases of refutation and review, non registration and review, and invalidation, respectively:
（1） The disputed trademark or cited trademark is in the process of changing or transferring the registrant's name, and after the change or transfer, there is no longer a conflict of rights between the disputed trademark or cited trademark;
（2） The cited trademark has passed its validity period and is in the renewal process or extension extension period;
（3） The cited trademark is in the process of cancellation or withdrawal of the application;
（4） If the cited trademark is revoked, declared invalid, or no longer renewed at the expiration of the period, and the date of revocation, declaration of invalidity, or cancellation at the time of the case trial has not been more than one year; It should be noted that if the reason for rejection does not involve Article 50 of the Trademark Law, there is no need to suspend it; According to the "Guidelines for Trademark Examination and Trial", if the cited trademark has been revoked due to three consecutive years of discontinuation of use, the guidelines shall be followed;
（5） The case involving the cited trademark has a conclusion waiting for the conclusion to take effect or the execution of the effective judgment waiting for a retrial.
There is one situation specifically applicable to cases of non registration review or invalidation, which is consistent with the provisions of Article 35 (4) and Article 45 (3) of the current Trademark Law, namely:
（6） The prior rights involved must be based on the outcome of another case being tried by a people's court or handled by an administrative organ;
There is one type specifically applicable to refutation review, namely:
（7） The status of the cited trademark rights involved must be based on the results of another case being tried by the people's court or handled by the administrative agency, and the applicant clearly requests to suspend the trial;
Here, in order to maximize the original intention of benefiting legitimate rights holders, there is no longer a distinction between the time and subject of the application for the cited trademark related case. However, the applicant for rejection of the reexamination case should clearly explain the specific circumstances involved in the suspension of the cited trademark registration number, program, and relationship with the case, and whether the suspension should also meet the aforementioned necessity principle.
There are three situations that can be suspended, namely:
（8） If the cited trademark involved in the rejection of the reexamination case has been requested for invalidation, and the registered trademark of the cited trademark has been determined in other cases to constitute malicious registration situations such as Article 4, Article 19, Paragraph 4, and Article 44, Paragraph 1 of the Trademark Law, the trial may be suspended; The difference between this situation and the aforementioned situation (7) is that the examiner can independently decide whether to suspend the application based on the specific circumstances of the case, in order to effectively reduce the difficulties caused by malicious registration of trademarks to legitimate rights holders, such as repeated applications and exhaustion of legal procedures.
（9） If it is necessary to wait for the same case or related cases to be ruled or judged beforehand, the trial may be suspended according to the needs of the individual case; This situation does not necessarily involve citing trademarks, nor does it require the applicant to submit a suspension application as a requirement. However, in order to coordinate the procedures for administrative authorization and confirmation, as well as administrative and judicial procedures, unify review and trial standards, avoid procedural errors 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.
And (10) other situations where the trial can be suspended. For situations that cannot be exhausted, based on the principles of necessity and in favor of legitimate rights, and taking the above situations as a reference, the examiner can independently decide whether to suspend the trial based on the specific circumstances of the case.
The third is the procedure for suspension, which specifies the time limit requirements, channels for applying for suspension, and the necessary conditions for resuming the trial after the suspension situation is eliminated.
To ensure the rights and interests of legitimate rights holders, while taking into account efficiency and fairness, as well as the stability of trademark registration order, the examiner's application for suspension of the case should be submitted within the prescribed time frame; The applicant for rejection of the reexamination case should also provide a written explanation of their actions to remove rights barriers to the cited trademark no later than three months from the date of their application for rejection of the reexamination.
If the above situation (7) requires the rejection of the applicant's request for a clear suspension of the review case, it can be submitted together with the reasons for the rejection response. The suspension request should specify the specific circumstances involved, such as the cited trademark registration number, the program, and the relationship with the case.
In principle, whoever applies for suspension of the trial shall apply for lifting the suspension.
After determining the status of the cited trademark rights, the applicant shall submit corresponding evidence materials. If the examiner receives the applicant's supplementary evidence and confirms that the suspension situation has been eliminated, the trial shall be resumed.
After the various suspension situations mentioned above are eliminated, the examiner shall conduct the trial according to the factual state at the time of review, and shall conclude the case according to the prescribed time limit requirements.
In future trademark review cases, we will strictly implement the various contents of the "Standards for Suspension of Review Cases"; And in combination with practice, we will further improve the standardized content, fully leverage the role of administrative procedures in determining and resolving disputes, effectively optimize the allocation of administrative and judicial resources, reduce the administrative and litigation burden of trademark authorization and confirmation for legitimate rights holders, "the people call me for action," comply with public opinion, handle practical matters, and promote the high-quality development of the trademark industry
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