Intellectual Property, Information Technology & Cybersecurity

When a trademark application is blocked due to the existence of prior similar mark(s), one of the ways to overcome the same would be to try removing the prior mark(s), such as commencing opposition/invalidation/cancellation proceedings. However, under the examination practice in China, there is no formal suspension procedure, meaning that the trademark application will continue to be examined notwithstanding that the actions against the prior mark(s) are still pending. As actions against prior mark(s) often take longer time than the examination of trademark application, in the absence of formal suspension procedure, the applicant would have to keep appealing the refusal decision, including filing a review, lodging an appeal to the IP Court, and even further appealing to the High Court, to lengthen the examination of the trademark application in the hope that the actions against the cited mark(s) will be determined favourably before the final determination of the trademark application. Various rounds of re-filings may also be necessitated. This leads to increased costs and extra prosecution efforts.

Since the late 2019, we start seeing the introduction of a new mechanism for the China National Intellectual Property Administration (CNIPA) to issue "Notice of Examination Opinion" instead of issuing the usual "Notice of Refusal" to list the prior mark(s).

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