1. Article 52 of my country’s Trademark Law stipulates: The use of an identical or similar trademark to a registered trademark on the same kind of goods or similar goods shall constitute an infringement of the exclusive right to use a registered trademark.
2. The so-called OEM processing is a form of processing trade. The behavior of OEM processing is specifically divided into four situations: the first is when the processor uses the same OEM trademark as the registered trademark on the same product; the second is when the processor uses the same trademark as the registered trademark on the same product. The third is the behavior of the processor using the same OEM trademark as the registered trademark on similar goods; the fourth is the processor using the same OEM trademark as the registered trademark on similar goods The act of processing trademarks
3. Based on what you said, I don’t know what kind of OEM production you are doing.
4. OEM processing is based on the entrustment of the person who has the right to use the trademark, and the goods entrusted with OEM processing are not sold in China. It is unlikely to cause confusion or misunderstanding among the relevant public, and should not be deemed for infringement.
5. According to the fourth point, it is obvious that this OEM production did not obtain the permission of the trademark holder, and the products produced did not clearly state that they were not sold in the country. The first point has constituted infringement.
6. In the case, if the investigation by the Economic Investigation Bureau is true, then the Industrial and Commercial Bureau will impose administrative penalties on you. If the trademark holder agrees to the settlement, then compensation can be discussed. If you do not agree with the punishment of the Industrial and Commercial Bureau, If you don't agree to the settlement, then you have to go to an arbitration institution or the People's Court.
But if you reach an agreement with the trademark owner (with written documents), then the trademark holder should not pursue this trademark dispute. You will not be sentenced or fined, because the plaintiff will not pursue the case. Unless a public prosecution is filed, you will only be fined and will not be sentenced. At the same time, you can also ask the trademark owner to cancel criminal liability against you.
7. In this case, you need to investigate whether the trademark holder’s trademark is a registered trademark (this is very important, ordinary trademarks are not necessarily registered trademarks). If you cannot find the registered trademark, That is not enough to constitute infringement. If the trademark is a foreign trademark, there will be no infringement.
8. From your description, it seems that the goods and the trademark are not together. Is it because the trademark is not affixed to the goods? If so, then it is not considered infringement.
9. According to Article 16, Paragraph 1, of the TRIPs Agreement: “The owner of a registered trademark shall enjoy exclusive rights and shall prohibit any third party from using the same trademark in the course of transactions without his permission. or similar goods or services, because such use may cause confusion, as long as the same mark is used on the same goods or services, it shall be presumed that confusion is likely to occur.” The document states: If a trademark identical to its registered trademark is used on the same product without the permission of the trademark registrant, unless it constitutes a fair and reasonable use, confusion factors do not need to be considered when determining infringement. According to this, the confusion factor in point 4 will not be considered when determining infringement of an unauthorized trademark. I think you are using the trademark without permission
10. In the foreign-related OEM processing cooperation, you have no time or even deliberately ignore the trademark risk, and often process and produce based on the fax orders and trademark styles of foreign businessmen. Once a trademark infringement dispute occurs, it is inevitable that the OEM processing and production enterprise will bear the liability for trademark infringement. In view of this, it is recommended that OEM processing enterprises should pay special attention to the entrustment of processing involving the use of registered trademarks. The entrusting party should provide a legal and valid trademark registration certificate. If a copy is provided, it should be certified by the trademark registration management department or corresponding agency where the OEM is located. . As for the problem you mentioned, you did not verify whether the trademark was a registered trademark before entrusting processing, so you are responsible. If you sign a written contract with the production company and do not provide a trademark license, then your responsibility will be greater.
11. When signing a contract for entrusted processing, it must be in writing. Although an oral agreement is considered a type of contract in contract law, it seems to be "unproven" now, because you can't contact the person, even if you can. , I can’t admit it,
12. In my processing company in Zhejiang, our unit also has many trading companies to entrust processing, but they are all export-oriented and do not have trademarks, so you have to be very careful about this. Notice. Be sure to check if there is a trademark.
13. However, my country’s Trademark Law does not stipulate the specific conditions for OEM companies to constitute infringement. Only the "Several Issues Concerning the Trial of Trademark Civil Dispute Cases" promulgated by the Beijing High Court on March 7, 2006 Answers to Article 21 of the "Answer to the Law of the People's Republic of China" stipulates: "If a contract is made to process goods bearing someone else's registered trademark, the contractor shall examine whether the orderer enjoys the exclusive right to use the registered trademark. Failure to fulfill the duty of care and processing infringes the exclusive right to the registered trademark If the goods are sold, the contractor and the orderer shall jointly bear the liability for damages and other infringements.
14. The Supreme People's Court shall assume civil liability for trademark infringement. The issue clearly states that: If the registered trademark requested for protection has not been actually put into commercial use, an order to stop the infringement can be used as the main method when determining civil liability. When determining liability for compensation, the fact that it has not been actually used can be taken into consideration as appropriate, except for expenditures for rights protection. In addition to reasonable expenses, if there is no actual loss or other damage, the compensation will generally not be determined based on the profits of the alleged infringer; if the registrant or transferee has no actual intention to use the registered trademark and only uses the registered trademark as a tool for claiming compensation, the compensation may not be determined. Compensation is required.
In other words, if the trademark registrant insists on claiming that the secondary trademark is a registered trademark, then it is an unreasonable request according to relevant legal provisions.
15. Goods. The possibility of coming back is very small. Even if the foreigner goes, he will not be deported because he will not be a person, but may be a representative of the company. In that case, your verbal agreement will take effect and he will be held accountable. , but he will not go. The goods are products produced by the trademark holder, so the goods will not come back. If they are not the same products and only the trademark is, according to the principle that infringement does not actually occur, then the Economic Investigation Bureau I want to return the goods to you, but I can no longer use this trademark or other unauthorized trademarks.
16. I don’t study law, that’s all I know. I don’t know if I can help you, but I can’t. You have been sentenced. This is a civil dispute and does not constitute criminal liability. In the future, you must pay attention to this point in OEM production and commissioned processing. When doing business, you must read the "Contract Law", "Trademark Law" and " "Labor Law", as well as "Intellectual Property Law", "Consumer Rights Protection Law", the contract is your source of interest, the trademark is your weakness, the labor law is your employees, the rest is some knowledge of economic law , at least understand the laws related to you, so as not to fall into this "foreign OEM trap"
I hope this can help you.