In June 2023, the TRAD adopted internal rules permitting the suspension of the appeals of refused applications on the basis that a proper resolution must await the results of cancellations, oppositions or invalidations against cited marks. See East IP memo on this development 更多信息参见此处.
Shortly after the issuance of these rules , the Beijing Intellectual Property Court (BIPC), the first-instance court for trademark rejection appeals, also announced its own new pre-docketing practice (BIPC Pre-Docketing Practice) allowing suspensions in such cases for a period of up to 12 months.
Since 2024, the TRAD and courts have consistently implemented their suspension policies, thereby allowing trademark owners to avoid the cost and inconvenience of filing multiple “back-up” applications to retain a foothold on the register while awaiting resolution of related disputes over prior rights.
The BIPC Pre-Docketing Practice only applies where:
- the refusal appeal is based solely on relative grounds (i.e., citations of prior marks), and not on absolute grounds (e.g., descriptiveness, non-distinctiveness, negative impact on social morality, etc. – refusals which have recently become more commonplace);
- the plaintiff has taken action against the cited mark(s) before the issuance of the TRAD’s decision; and
- the status of the cited mark(s) will substantively affect the disposition of the disputed mark.
The fact that the TMO is now looking more carefully at parties’ filing histories is clearly a positive development, as this should help deter bad faith pirates from filing en masse for other parties’ marks. However, brand owners seeking to purchase marks from pirates should keep in mind the risk of refusal by the TMO when developing their strategies.
If, for tactical reasons, a brand owner elects to file trademark applications through a front company, it is strongly advisable to file through a company that is “clean”, i.e., one that does not have a significant record of trademark applications, particularly for third-party marks.