Research On The Trademark Infringement Issue Of OEM

The trademark infringement dispute of OEM is full of controversy,which reflects people’s different opinion on the judgment of trademark infringement.Thus,the thesis will focus on the judgment of trademark infringement to give an answer to the trademark infringement dispute of OEM.The first chapter of the thesis focuses on the definition of trademark use.The business activity could not constitute trademark infringement if it was not defined as trademark use.People take different views on whether OEM constitute trademarke use.The opinion of the thesis is that trademark use has tight connection with circulation,for the trademark will not play a role of source identification unless the goods of services go into circulation.In opinion of some scholars,trademark use has nothing to do with circulation,which is based on fact that the Trademark Law of PRC takes the conduct of manufacturing the signs of registered trademark as a direct trademark infringement.However,the provision of the Trademark Law of PRC is wrong when legal theory is considered,since many contradictions and paradoxes will arise.Moreover,we can’t find any support for the provision when comparative research is done.Thus,argument based on the provision will not be persuasive.After the relationship between trademark use and circulation is clarified,further research will be conducted on the constitutive requirements of different kind of business activities, which are divided into that with transaction relationship and that without transaction relationship,constituting trademark use.Concretely speaking,the object of transaction should be the goods or services identical with or similar to that registered trademark directs if the business activities with transaction relationship constituted trademark use;the business activities should be conducted out of selling the goods involved if the business activities without transaction relationship constituted trademark use.According to the rules stated above,OEM does not constitute trademark use.Chapter two of the thesis concentrates on the status of possibility of confusion in the judgment of trademark infringement.People takes different views on whether possibility of confusion should be the criterion for trademark infringement judgment in the “double-same” situation.The thesis argues that the trademark law of PRC, especially the dualistic structure provision of trademark infringement,mainly copies that of EU,so the interpretation of EU to the provision means a lot to us. Possibility of confusion is not provided explicitly as the composing element for the judgment of trademark infringement in the “double-same” situation in the EC trademark directive. However,the European Court of Justice substantially considered it as the judgment criterion in the “double-same” situation in several typical cases. Thus,the court of PRC should interpret the corresponding term in the same way.One means of interpretation our courts may apply is to tell the parties that the judgment of trademark infringement should be based on the damage to The fundamental function of trademark, namely source identification.The other applicable way is to define trademark properly to achieve the foregoing explanation purpose.The goods will not go into circulation within our country in OEM. Neither will what the manufacturer in OEM conducts do damage to the function of registered trademark, namely won’t cause confusion to the public.Thus,OEM should not be considered as trademark infringement.The third chapter of the thesis mainly research on the trademark infringement issue of goods exportation which is a special part of OEM.The issue is related to the understanding and application of paragraph 1 of article 3 of Regulation of Customs Protection of Intellectual Property Rights,which makes the issue special.In the view of the thesis,trademark infringement should not be determined according to the foregoing provision.The behavior pattern is only the formal requirement the goods exportation should satisfy to constitute trademark infringement.The exportation should be a part of sale of the goods,which is the material requirement.However,the exportation in OEM can’t satisfy the material requirement.Thus,it should not be considered as trademark infringement.The forth chapter of the thesis mainly analyze the possibility and obstacle of OEM constituting indirect trademark infringement.what the manufacturer does in OEM includes these conducts,such as warehousing and transporting the goods with registered trademark.These conducts will be defined differently in different situation.If the goods with registered trademark were warehoused or transported for the purpose of marketing by oneself,then the warehousing or transporting would be defined as direct trademark infringement.If the purpose of these conducts were to facilitate others’ trademark infringement,then they would be considered as indirect trademark infringement.In this sense,it is possible for OEM to constitute indirect trademark infringement.However,the possibility never become reality for the territoriality of trademark right.what the offshore principal does will never be judged as direct trademark infringement by the courts of PRC and indirect trademark infringement should be based on direct trademark infringement.Thus,OEM should not be taken as indirect trademark infringement.