Research On Trademark Infringement Issue In Foreign-related OEM

OEM (Original Equipment Manufacturing, its Chinese translation is“定牌加工”), refers to the trade pattern that the processing party makesproducts for the ordering party under specific trademark and deliversthem to the ordering party in accordance with the contract, then the latterpays the processing fees to the former accordingly. OEM has made agreat contribution to the growth of export trade, however, the trademarkinfringement disputes arising from it also presents a gradually increasingtrend. If the trademark that the foreign ordering party entrusts thedomestic processing party to attach on the products is the same or similarto the trademark which has already been registered domestically in accordance with the law, and it is approved to be used on the same orsimilar products, as to whether such action constitutes trademarkinfringement, there is a considerable controversy between the theoreticaland practical circles, and the cases with similar circumstances maypresent different verdicts. Therefore, whether the foreign-related OEMconstitutes trademark infringement is an urgent problem to be solved,conducting an in-depth analysis and study on it has a great practicalsignificance.This article will apply the theory of the Trademark Law, on the basis of2typical cases, aiming at the main reasons identified in the theory andpractice whether the action constitutes infringement or not, make an in-depth analysis on the key factors for infringement identification such asthe use of the trademark, the possible confusion principle, damage andregionality of the trademark etc, draw the conclusion on whether theforeign-related OEM constitutes trademark infringement, and proposelegislation and corporate risk prevention recommendations. The article isdivided into4parts: I. Raise the issue. On the basis of2typical trademarkinfringement cases arising from the foreign-related OEM in the judicialpractice, the author makes an analysis on the focus of controversy and main reasons for judgment of the “Nike Dispute” and “CrocodileDispute”, and arouse the thought on a series of questions: whether OEMconstitutes the trademark use in the sense of the trademark law, whether itwill cause confusion and misunderstanding in the related public, andwhether it will cause damage to the domestic trademark holder. II.Analysis on the theoretical and practical points of view in China. Theauthor firstly describes the concept, legal characteristics, classification ofOEM and the types of trademark infringement involved, clarifying themeaning of trademark infringement issues involved in the foreign-relatedOEM discussed in this article. Then, the author concludes andsummarizes three different points of view and their reasons from thetheoretical and practical circles for identifying whether the issue does notconstitute infringement, constitutes infringement and is an exceptionalcircumstances, and draws a conclusion that the correct characterization ofthe foreign-related OEM trademark infringement issue has become animportant subject which bothers the judicial practice and needs to besolved. III. Analysis of relevant factors for infringement judgment. Byanalyzing the factors for infringement judgment such as the use of thetrademark, possible confusion principle, regionality of the trademark as well as social and economic development, the author clears off thetheoretical misunderstanding of the previous points of view in disputes,and draws the conclusion of this article. IV. Conclusion of the study andsome recommendations. Aiming at the analysis of the third part, theauthor draws the conclusion that the foreign-related OEM actionconforms to the general constituting element of trademark infringement,and shall be identified as constituting trademark infringement, andproposes the specific legislation and corporate risk preventionrecommendations.