Friday, December 8 2023   \  Published by Asia IP Law.

Revisiting trademark prosecution strategies in light of new guidance regarding the suspension of trademark review cases

Revisiting trademark prosecution strategies in light of new guidance regarding the suspension of trademark review cases

On June 13, 2023, the China National Intellectual Property Administration (NIPA) published a notice explaining its new internal working guideline, which specifies situations where the NIPA examiners should or may temporarily suspend the examination of trademark rejection review cases and other proceedings (Guideline). For example, when an application is rejected due to a similar existing trademark, one common strategy is to initiate an action to cancel the registration of the existing trademark. The suspension mechanism in the Guideline facilitates this by halting the rejection review until the related cancellation action is completed. Previously, suspension was rare, and there was no detailed guidance on the circumstances in which suspension should take place. The Guideline therefore clarifies important issues and can assist trademark applicants in such review proceedings.

Strategies to address the rejection of a trademark application under the existing Trademark Law and before the issuance of the Guideline

Before diving into the details of the new Guideline, it is helpful to consider first the existing trademark prosecution strategies and practices which led to the issuance of the Guideline.

Under Article 30 of the Trademark Law, a trademark registration application may be rejected on the basis that the proposed mark is identical with or similar to earlier marks in respect of the same or similar goods or services (commonly known as cited marks). Read more

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