Multiple Administrative and Judicial Measures Taken Simultaneously to Promote Efficient Examination

Author: Wenjuan(Judy) Liu; Danqing(Belinda) Zhao

In the trademark authorization procedures, in order to overcome the prior cited mark, a common strategy would be to take action against the earlier mark via opposition, non-use cancellation, or invalidation. However, examination results of the trademark application or the review of refusal will very often come out before the counter-action is decided, thus leaving the owner to either continue to file costly appeals or refile an application for their own trademark.


To reduce the amount of unnecessary administrative litigation caused by the unstable status of prior mark citations, and to reduce the applicant’s burden on re-filing, the China National Intellectual Property Administration (CNIPA) and the Beijing Intellectual Property Court issued new policies both from administrative and judicial perspectives.


On 13 June 2023, the CNIPA issued an Interpretation of Guidance for Suspending Review Cases, providing seven situations where suspension is required and three situations where the examiner has deemed it appropriate. 

Multiple Administrative and Judicial Measures Taken Simultaneously to Promote  Efficient Examination

Under the following seven situations, a suspension shall be granted:


1) The applied-for mark or the cited mark is undergoing name change or assignment procedures, and the conflicts of rights will be removed after the completion of such change or assignment;

2) The validity period of the cited mark lapses and is in the process of renewal or in the grace period of renewal;

3) The cited mark is undergoing removal of registration or withdrawal of application procedures;

4) The cited mark has been cancelled, declared invalid or has expired without renewal, but still within one-year restriction period after cancellation, invalidation or absent renewal. If however the cited mark is cancelled due to non-use for three consecutive years, the one-year-term is not applied. In other words, there is no need to wait one year after the cited mark is cancelled based on non-use.

5) The case involving the cited mark has reached a conclusion and is awaiting the effectiveness of the conclusion or the execution of an effective judgment awaiting re-trial.

6) The prior rights concerned shall be decided by the result of another case being tried by the Court or being handled by an administrative authority. (This is specifically suitable for review of non-approval of registration and invalidation cases.)

7) The legal status of the cited mark concerned must be decided by the result of another case being tried by the Court or being handled by the administrative authority, and the applicant requests the suspension of the review. (This is specifically suitable for review of refusal cases.)


Under the following three situations, the CNIPA may use its discretion to suspend the cases:


8) In case of review of trademark refusal, if the cited mark is pending in invalidation procedure, and the registrant of the cited mark has been considered as acting in bad faith in other cases, the examiner can autonomously decide whether examination shall be suspended. The applicant’s request is not a necessary condition.

9) The result of similar cases or result of relevant cases shall be used as reference. In such scenarios, the examiner can decide on a case-by-case basis. The applicant’s request is not a necessary condition.

10) Other situations wherein suspension is necessary.


In parallel to the CNIPA’s action, the Beijing Intellectual Property Court also issued new judicial policies. For administrative litigation cases of review of refusals wherein the key cited mark is involved in other pending cases and its status is unstable, the court now allows the plaintiff to apply for pre-filing before the formal filing of the case. The pre-filing can last up to 12 months (not extendable), during which the litigation case will be suspended. The plaintiff can end the pre-filing case at any time after the status of the cited mark is determined, so as to either enter the formal filing or abandon the lawsuit.

Multiple Administrative and Judicial Measures Taken Simultaneously to Promote  Efficient Examination


The provisions on the suspension of trademark examination in the above administrative and judicial proceedings are very specific and clear, and basically cover the main disputes in the current trademark authorization and confirmation procedures. We can expect that the implementation of the above policies will greatly improve the efficiency of trademark examination and facilitate the authorization of trademark rights for legitimate rights holders. We will be providing updates on the implementation of these polices.


  • Related information More
  • 点击次数: 1000015
    2024 - 02 - 23
    Author: Yingying Zhu, Partner at BEIJING MINGDUN LAW FIRMEmail: zhu.yingying@mdlaw.cnDate: February 21, 2024Introduction There is a motto that you might be told as a kid: no one is born a winner; everyone is born a chooser-making choices as to who you want to be. However, when you grow up, you find that, sometimes with great frustration, this motto might not be true because some people are born with a sliver spoon in mouth while others are not as lucky. In the commercial world, there are products who are born winners-those with a Geographical Indication (hereinafter, the “GI”) which is a sign that identifies products that originate from a specific geographic location and possess certain qualities or reputation due to their origin. Some examples of domestic GIs in China are Kweichow Mo...
  • 点击次数: 1000019
    2024 - 01 - 18
    Author: Yingying Zhu, Partner at BEIJING MINGDUN LAW FIRMEmail: zhu.yingying@mdlaw.cnPublished: January 17, 2024China has a multiagency system for protecting geographical indication (GI) products. GIs can be registered as collective or certification trademarks before the China National Intellectual Property Administration (CNIPA). GI products can also gain protection from the former General Administration of Quality Supervision, Inspection and Quarantine. Primary products produced through farming can be protected as GIs of agricultural products before the Ministry of Agriculture and Rural Affairs. This multiagency system has proven to be burdensome, inconvenient, and sometimes confusing, especially to foreign GIs.To address resounding calls for reform, on September 18, 2023, CNIPA released...
  • 点击次数: 1000018
    2024 - 01 - 10
    Author: James LiuMain Trademark Legislation in China in 2023 1. The Standard for the Circumstances for Suspension of Review cases 2. Pre-filing of administrative litigation cases against review of refusals grant the plaintiff 12 months (not extendable)3. Measures for the Implementation of the Provisions on the Administration of Enterprise Name Registration 4. Convention on the Abolishment of the Legalization Requirements for Foreign Public Documents will come into effective in China5. Notice on comprehensively implementing online filing for opposition cases6. Draft Amendments to Chinese Trademark Law in 2023  1. On June 13, 2023, the Trademark Office under the CNIPA published the Interpretation on the Standard for the Circumstances for Suspension of Revie...
  • 点击次数: 10
    2023 - 10 - 20
    Author: jia chang ZhangIntroductionWith the development of science and technology, the patentability of biotechnology, especially human genes, has always been in dispute. Proponents argue that human genes should be patented without restriction, and that any possible challenges and concerns can be addressed by patent standards. This article will first analyz patent systems in the United States and Europe to examine the patentability of genes, and the role of patent standards in protecting human genetic development. Then focus on evaluating the legitimate concerns raised by opponents about human gene patents and assesses whether the three criteria for patents can fully solve existing problems. Finally, by introducing the unique licensing system in Canada, a new solution to the problem of hum...
× WeChat official account
Beijing Mingdun Law Firm
Copyright 2008 - 2020 Beijing Mingdun Law FirmRhino Cloud Provides Enterprise Cloud Services