，OEM(
Original equipment manufacturer,
"OEM") OEM produces all kinds of products, if the products are exclusively for export and the brand logo of foreign customers has been registered by domestic third-party enterprises.
, this kind of OEM behavior violates the trademark rights of trademark owners in China? It depends on whether the OEM behavior constitutes "trademark use behavior" under the Trademark Law.
Article 3 of the Regulations for the Implementation of the Trademark Law defines "trademark use behavior" as "including the use of trademarks in commodities, commodity packages or containers and commodity trading documents, or the use of trademarks in advertisements, exhibitions and other commercial activities".
. The existing law does not stipulate whether the OEM behavior of OEM production belongs to the "trademark use behavior" under the Trademark Law. The customs, the industrial and commercial bureau and the people's court have different opinions on whether the "trademark use behavior" stipulated in the Trademark Law includes the OEM behavior of producing its products only for export, especially the trademark of the OEM products has been legally registered in China, which conflicts with the trademark rights of foreign brands. In some cases, China Customs will usually release the goods if it can be proved that the trademark owner is the consignor of the export destination country. In other cases, Chinese trademark owners may apply for seizure of infringing products.
. This is the "grey zone" of legislation.
Administrative organs, such as China Customs or the Industrial and Commercial Bureau, can take administrative inaction or action against claims that infringe on Chinese trademark ownership.
The Supreme Court and some local courts gave guidance in the case. What the court is concerned about is whether the OEM subjectively infringes intentionally, and whether the "relevant public" who buys the product confuses the source of the goods, which depends on whether the product really flows into the China market. Subjective infringement deliberately emphasizes that the trademark owner needs to ensure that the OEM products are exclusively exported in the OEM agreement, and the entrusting party provides the OEM with the ownership evidence of the disputed trademark in the export destination country.
. From recent cases, it can be seen that OEM production is an export OEM, which may not be recognized as "trademark use behavior" in trademark law.
. Enterprise's good product planning and
In the trademark administrative dispute case of the Trademark Review and Adjudication Board of China Administration for Industry and Commerce ("Muji case"), the Supreme People's Court made important guidance during the arraignment. The disputed trademark "MUJI" (the Chinese name of the "MUJI" trademark) was used on the goods that were exclusively exported by OEM in China under the Good Product Program. After the application for objecting to the trademark office was rejected, Liangpin plans to bring an administrative lawsuit to the court.
It is claimed that the "Muji" trademark of the "Good Product Plan" was first used in China and was well known to the public before the disputed trademark applied for registration in China, which is a "trademark use behavior" based on the OEM of export products.
. After the trial, the Supreme People's Court thought that OEM products specially used for export did not belong to the "trademark use behavior" stipulated in the Trademark Law (aiming at the claim of "prior use"). Even if the "Good Product Plan" entrusts enterprises in China to produce related products for export, the products printed with the logo are neither sold in China market nor advertised and publicized in China. The court found that the act did not belong to the "trademark use act" stipulated in the Trademark Law.
Because the trademark can only play a role in the circulation of goods, and in this case, the product where the "Muji" trademark is located has not entered the China market.
Similar to Guangdong case (selected as one of the top ten typical cases of intellectual property rights in 20 1 1 published by Guangdong High Court): Crocodile Shirt Co., Ltd., a non-infringing plaintiff, registered in Hong Kong, China.
"Crocodile" trademark registrant, the trademark is approved for use on shirts and other commodities. The men's shirts produced by Taishan Lifu Clothing Co., Ltd. under the authorization of Daiwa Company and Cangbao Company in Japan are marked with the registered trademark "crocodile crocodile crocodile pattern" in Japan.
. After comparison, the text part of the trademark is suspected of infringement.
"Crocodiles" and "Crocodiles" involved in the case
Some trademarks have different English letters and different font colors. Crocodile T-shirt Co., Ltd. sued Taishan Lifu Clothing Co., Ltd. in court, demanding that it stop infringing its trademark rights and compensate for the losses.
The court held that the behavior of Taishan Lifu Clothing Co., Ltd. belongs to foreign-related licensing processing behavior. Because the registered trademark that Crocodile Shirt Co., Ltd. claims to protect is not the same as the infringed trademark. Taishan Lifu Clothing Co., Ltd. processed according to the order after fulfilling the necessary duty of care, and did not intentionally infringe the registered trademark of Crocodile Shirt Company. At the same time, the products involved in the case produced by Taishan Lifu Garment Co., Ltd. are not actually sold in China market, so the market share of Crocodile Shirt Co., Ltd. in China will not be improperly occupied, and the trademark recognition function of its registered trademark will not be damaged. The court finally concluded that Lifu's foreign-related licensing processing behavior did not infringe the exclusive right to use the registered trademark of Crocodile Shirt Company, so it rejected the claim of Crocodile Shirt Company to investigate Lifu's tort liability. If you need legal advice, or hire a legal adviser.