A known risk when trying to register a trade mark is the existence of earlier conflicting trade mark rights owned by third parties, which may be an obstacle to the registration of your trade mark. This is particularly true in countries such as China and the US, where the local trade mark office refuses registration of a trade mark on its initiative if they believe there is a risk of confusion with an earlier registered mark, giving the applicant a deadline to respond.
When a refusal is issued on this basis, the applicant will often try to remove the obstacle by applying to cancel the earlier registration, for example on the basis that it has not been used for 3 consecutive years. Doing so however takes time and the applicant may not be able to remove all the prior cited marks within the deadline to respond to the refusal. A suspension of the application proceedings is therefore often necessary.
Until this year, however, in China a suspension was not granted automatically, but at the discretion of the examiner, which meant the applicant risked having to file subsequent costly appeals to keep their application alive while they tried to remove the prior cited mark. This is now no longer the case as the China National Intellectual Property Administration (CNIPA) on 13 June 2023 announced changes to its suspension rules.
Suspension of the application proceedings will now be mandatory if the applicant requests it after applying to cancel a prior mark cited as a bar to their application. This is particularly sensible as it saves time and costs to both trade mark applicants and the Administration.
WP Thompson can help you protect your trade mark in China through an International Registration or through our extensive network of associates. Please contact one of our trade mark experts, who will be delighted to assist you.
