By King and Wood Mallesons

On January 28, 2020, the China National Intellectual Property Administration(CNIPA) issued a notice named the Matters Concerning the Term of Patents, Trademarks, and Layout Designs of Integrated Circuits Affected by the Epidemic, which announced that if the parties had delayed the time limit stipulated in the Trademark Law and its implementing regulations or specified by the CNIPA for epidemic-related reasons, the relevant time limit will be suspended from the day when the obstacle to the exercise of rights occurred, and it will continue to be calculated until the day when the obstacle to the exercise of rights is eliminated, except as otherwise provided by law. If the trademark right is lost due to the obstacle to the exercise of rights, a written application should be filed within 2 months from the date when the obstacle to the exercise of rights is eliminated, the reason shall be given, and the corresponding certification materials shall be filed to request the recovery of the rights.

According to the following questions in the actual implementation of the above notice, the CNIPA made the following responses:

1.What kind of trademark matters are applicable for suspension?

If the parties handle such trademark matters as amendments, replies to examination opinions, payment of trademark fees, providing of evidence of use and negotiation for applications filed on the same day, providing of evidence of use for the revocation of non-use of registered trademarks for three consecutive years, oppositions, review of trademark refusal, review of not granting registration, review of invalidation, filing of  application, defense or providing of supplementary evidence of revocation, filing response to or providing supplementary evidence of invalidation, etc., and the matters  cannot be filed within the time limit or the specified period due to the epidemic situation, the relevant time limit will be suspended from the day when the obstacle to the exercise of rights occurred, and it will continue to be calculated until the day when the obstacle to the exercise of rights is eliminated.

2.What is “the day when the obstacle to the exercise of rights occurred” and “the day when the obstacle to the exercise of rights is eliminated”?

“The day when the obstacle to the exercise of rights occurred” refers to the day when the party concerned starts hospitalization, quarantine due to coronavirus infection pneumonia, or fails to handle trademark matters normally due to epidemic prevention and control measures in their area.

“The day when the obstacle to the exercise of rights is eliminated” refers to the day when the party ends hospitalization, quarantine due to coronavirus infection pneumonia, or the work resumes and the personnel control ends in their area.

Based on the special circumstances of this epidemic situation, in order to protect the rights and interests of the parties to the greatest extent, if the parties have the both time above, the most favorable time shall be used as the date on which the obstacles to the exercise of rights occurred and were eliminated.

3.How to claim suspension of term?

When handling the above-mentioned trademark matters, the parties shall also submit a written application for suspension of the time limit. The application shall specify the area where the parties are in the epidemic period, the reason for the obstacle to the exercise of rights, and the time to eliminate it, and submit corresponding certification materials.

4.What kind of supporting documents can be submitted for the claim of suspension?

The parties should provide proof of infection treatment, quarantine, or period of control, except for the notice of delayed resumption of work which is publicly issued by the local government.

In order to reduce the burden of the parties affected by the epidemic situation, for multiple similar matters applications that are suspended for the same reason, you can submit only one proof and submit the proof with one of the cases, and for the other cases you only need to indicate the application number of the case in which the certification materials are located.

5.What should I do if the trademark renewal is not handled in time due to the epidemic?

If the parties fail to handle the trademark registration renewal application within the grace period due to the epidemic situation, which may result in the loss of their trademark rights, they may file an application for renewal within 2 months from the date when the obstacle to the exercise of rights is eliminated, and refer to point 4 to attach the supporting documents.