Authors: Mandy Liu and Robert Zang, Senior Trade Mark Attorney at strategic partner, Lusheng Law Firm
Many applicants have had their trade mark applications refused due to the existence of similar prior marks on similar goods. To overcome a citation, filing an appeal against the refusal with a suspension request and removing the citations is the usual course of action. However, due to the uncertainties in securing a suspension of the appeal, the applicant typically has to file rounds of appeals and new applications whilst awaiting the results of actions against the citations. This has the potential to be time-consuming and costly. The CNIPA recently released new rules that aim to resolve this issue.
According to the current Trade Mark Law, a “suspension may be granted” if the status of the prior right is uncertain and dependent on the result of another case under review by a court or being processed by an administrative authority. Essentially, examiners will decide whether to grant a suspension at their discretion. But in practice, the examiners are normally reluctant to grant a suspension for the sake of “efficiency”. This practice has significantly increased the burden on brand owners who may have to refile applications or go through court appeal proceedings while awaiting a final determination on the status of the citations. Read more