Research On The Trademark Infringement Problem In Relation With OEM

OEM refers that the processor produces the goods according to the requirement of commissary and attaches the trademark offered by commissary, and processor must return all the goods to commissary, only receiving the processing fees. The common approach is like this: the processor who owns the product brand uses their controls of the brand, the core technical and distribution channels entrust the goods to the product manufacturer with production capacity. At present, the cooperation model has been widely used in Clothing process, electronic device process, appliance manufacture, auto parts manufacture and other fields, it is an important way to the Private Enterprise and regional economy development .it is also an effective model to revive the development of ethnic economy .However, OEM is also a "prickly rose", the Chinese processor produce the goods according to the requirement of foreign commissary and attaches the trademark offered by commissary, if we apply Trademark Law Article 52 and the Trademark Law Implementing Regulations Article 3, would come to the conclusion of trademark infringement. In fact, not only in terms of trademark infringement theory, but also the legislative purpose of laws or national interests, the conclusions irregularities. Therefore, it is necessary to understand the trademark infringement issues correctly in OEM.Generally,this paper can be divided into three parts.The first Part is to outline the OEM in which I summarize the concept, legal characteristics, legal relationship and the different attitudes of Judicial and academic circles towards the OEM trademark infringement. For more accurate understanding of the concept and rationality of OEM, I described the development of OEM in detail. For the next step, In order to better understand the rights and obligations of both parties in OEM relationship, I analyzed the legal relationship between on the two parts of OEM relationship and contrast the trademark licensing in OEM with general trademark licensing. I have acquired the main reasons why the two parties hold different viewpoints by comparing the viewpoint in the theory circle. The main reasons actually lie in whether or not the confusion of theory should be applied in judicial practice as well as the understanding of the meaning of"the use of trademarks"in relevant regulations.The second part analyzes how to judge the trademark infringement of OEM in depth by building a theoretical platform with which to judge trademark infringement. The presentation of trade infringement falls into two aspects: one is the explication that the theory of confusion is the precondition of the judgment of trademark infringement. The explication concerning the theory of confusion is divided into the subject of confusion, occurrence time, the possibility & feasibility of confusion and the representation of acts enough to give rise to confusion; another aspect is related to the explication of the acts of trademark infringement & the obligation of trademark infringement. In the civil law, the tort law is an ancient legal system. According to the investigations into history, trademark ownership is derived from torts. In Britain and America, the original"act of passing-off"that provided trademarks with protection was listed in the tort law, which could support to pay compensation for related damages. Therefore, the theory of the tort law is instructive for the cognition of the acts of trademark infringement. The issue of how to judge the trademark infringement of OEM is what this thesis is principally explicating. I put forward my own viewpoints as regards the controversial issues in OEM: (1) the trademarks used by the international OEM are not the trademarks in terms of the trademark law, because they are not possessed of the differentiation functions of trademarks; (2) the acts of the use of trademarks in OEM haven't led to the consequences that can confuse the consumers, which doesn't constitute trademark infringement; (3) the acts of the use of trademarks in OEM is not the use in terms of the trademark law, which is not within the scope of the regulations of the trademark law, and this is actually where the value of this thesis lies. Initially, I define"the use of trademarks"in terms of the trademark law. Then on the basis of the comparison with the legislation of Taiwan Province, I think: In terms of the essential meaning of trademarks, only the acts that can bring the essential functions of trademarks into play can be called the use of trademarks, trademarks symbolize the products or services of the managers, which can help distinguish among products or services provided by different proprietors, and only when relevant groups are regarded as the symbols that are to distinguish among commodities or services of different proprietors can it be viewed as the acts of use of trademarks.The third part is relevant to the legislative proposals as for the solutions to the trademark infringement of OEM. To begin with, Article 52 of Trademark Law of China has merely listed a few types of trademark infringement nominally, and it hasn't clearly identified"the possibility of confusion"as the material requirement of trademark infringement. The stipulation about"the confusion"is restricted to the protection for famous trademarks in Article 13 of Trademark Law and"the tendency that the relevant customers are prone to have misunderstandings"in Article 1 of Supreme People's Court, the Explanations for Several Issues about the Appropriate Laws for the Trials for Civil Disputes about Trademarks. The foremost precondition of the judgment of trademark infringement is whether or not the confusion is brought about. TRIPS and the legislation of other countries have all viewed"the possibility of confusion"as the material requirement of trademark infringement. Consequently, I recommend that Article 52 of Trademark Law should clearly stipulate that"the possibility of confusion"is the prerequisite of trademark infringement. In the next place, the definition of"the use of trademarks"has a profound significance in terms of the trademark law, which has always been attached importance to by the legislation of all the countries & territories."The use of trademarks"is supposed to be the use in the process of the circulation of commodities, and this is determined by the nature of trademarks, namely their functions of differentiation. Such functions can be brought into play when the trademarks are affixed to commodities in circulation. Therefore, the purpose of"sales"should be taken into account while the use of trademarks is defined in the trademark law. Ultimately, Article 12 of The Regulations on the Protection of Intellectual Property Rights of Customs of PRC stipulates that customs can not only detain the import cargos suspected of infringing intellectual property rights, but also detain such export cargos. Based on the stipulations concerning both export and import together with the mechanical application of the trademark law, the acts in which the parties of OEM affix the same trademarks registered domestically to their products of OEM are view as trademark infringement by the customs, and the customs will detain the products. I deem that such excessive protection may severely adversely affect the interests of China's OEM concerning foreign affairs, and I recommend modifying these regulations in order to accord with TRIPS, stipulating that customs can only manage only the import affairs, not the export affairs.