| OEM(Original Equipment Manufacture), refers to the enterprise to accept foreign clients commission to produce goods with a registered trademark, the goods are delivered to the principal, only to charge the business model of processing fees. For such a foreign trademark processing behavior in the use of foreign trademark logo, if the country has the same or similar trademark registration, whether it constitutes infringement? There are three different views in the judicial circle due to the no clear regulations of the law and regulations. The judicial opinion of the Guangdong court as the positive representative of the trademark infringement in the trademark processing says when the trademark is registered in China, it is to be protected in the approved scope of use, whether China or foreign parties shall not infringe, the right of trademark right outside the country should not exempted the responsibility from the trademark infringement in our country. The affirmative opinion is mainly from the geographical point to view the behavior of OEM. At the same time, many articles says there is no necessary connection between trademark infringement and confusion. Another part of the scholars also put forward that the identification of trademark infringement not require practical confused, the likelihood of confusion is mean to constitute infringement. Negative opinion by Shanghai court said that the products involved not in sales in China, products stick attached to the trademark will only to identify the source of the goods produced outside of China, so it is not possible to cause the relevant public confusion and mistake in territory of China, also will not harm the right of registered trademarks, so the decision is to confirm the plaintiff not tort. Beijing high people’s court has also set the OEM does not constitute trademark infringement in written. Compromise theory said that the treatment of trademark infringement in OEM issues should on the basis of different circumstances. Zhejiang and Fujian is considered to be the represent pf compromise theory. Higher People’s court of Zhejiang Province has also research on the trademark infringement in OEM, thinking that on the use of same trademark in the same commodity is directly establish infringement, regardless of whether there is confusion; if the use of trademark on accused infringing goods is not the same as the domestic registered trademark, or the commodity is not the same, case is considered that an OEM products are exported, will not lead to the likelihood of domestic consumer confusion, and does not constitute trademark infringement. Fujian Provincial Higher People’s court held that the right to decide on the trademark infringement in OEM, should be strict, difference means not tort. Trademark infringement disputes related to the OEM in the coastal court has been quite large, but there are no uniform regulations for the infringement of the relevant laws and regulations, which lead to the different judgment in similar cases in the judicial practice. Even the same party should bear different result, originate from to he declare the same export in the portof different provinces, seriously affecting the credibility of the court.This paper, based on the case of trademark infringement disputes involving OEM put forward whether the trademark infringement should consider confusion as a important requirement. Then analyze five questionable point of view in the theory and practice, including whether the paste trademark behavior in OEM is not the trademark use, OEM trademark infringement cognizance should take confusion as the elements, whether the goods in circulation is mixed into confusion, whether the presumption of trademark confusion is absolute presumption or relative presumption, does related public to judge trademark infringement include operators, consumer or spectators.The behavior of "using" trademark in OEM is not a special trademark infringement, whether it constitutes infringement or not, should be judged according to the elements of confusion. The purpose of post trademark on OEM goods is to play the function of indicating the origin of the goods when the goods enter into circulation. As long as the function is the purpose, it has formed the use of the trademark law sense. And the function should mot denied as the excuse that the product is not yet to face consumers prior to exported.China’s legal system about the provisions of the confusion is few and scattered, provisions and the content is relatively simple, but the agreement on trade related intellectual property rights(TRIPS Agreement) and the Lanham act of the United States clearly defined confusion, can say the confusion theory as the foundation of the trademark law. Confusion in trademark law includes not only the direct confusion of different market players who provide goods or services, but also the indirect confusion of whether or not there is a certain relationship between the two marks. On the surface, the trademark is merely a symbol, which is not a reason to give legal protection or relief. Only when the trademark hosts the enterprise goodwill and other property interests can be protected, in order to obtain the legal relief of the infringement. The function of the trademark is the source identification. The object of the protection of the trademark right is the enterprise goodwill. The manifestation of trademark infringement is varied, and its essence is to destroy the function of the trademark identification. As long as the damage or material damage to the function of the identification of the source appear, it falls into the category of the trademark infringement. Trademark infringement is a special kind of civil tort, the four elements of the general civil tort cannot be applied in the trademark infringement. The liability principle of trademark infringement or intellectual property infringement is not expressly provided by law. As the mainstream view of the current, the trademark infringement is to take the principle of no fault, that is, as long as the violation of the rights acts, you have to bear the legal responsibility, regardless of whether the existence of intentional infringement. Trademark right is a kind of intangible property right, the action of infringing the exclusive right of the registered trademark will cause the damage, but there may be no real material damage. Therefore, the infringement of the trademark does not require the plaintiff to prove the actual damage of the results, there is damage to the infringement. There is no need to prove the result of the infringement of the trademark, and there is no need to prove the cause and effect relationship between the damage and illegal behavior. The illegal nature of the act of trademark infringement should be satisfied, and if there is no violation of the law, the law will not interfere. The Trademark Law lists seven kinds of illegal acts, but the the similar of trademark or same of goods is not necessarily illegal, if it does not lead to the relevant public confusion, even if the elements of the two trademarks are similar, it does not necessarily lead to the legal consequences of similarity of trademark. Therefore, the introduction of trademark confusion standard is in accordance with the nature of the protection of trademark right.The confirm of trademark infringement should consider confusion as the elements, here the confusion refers to likelihood of confusion, and not the actual confusion. OEM products also have a "export to domestic" situation, the opportunity to come into contact with the domestic consumers, therefore there is no need to consider whether the goods will enter the field of circulation, the judge is still to determine the likelihood of confusion from the perspective of the general consumer, according to the specific circumstances of the case and various factors.Because the confusion of trademark infringement is a kind of possibility, then the possibility should be based on the comprehensive factors. The TRIPS agreement rules that the likelihood of confusion shall be presumed if the same goods or services use the same mark. Some people think that this is an absolute presumption that can not be reversed, directly lead to the effect of substantive law. In view of the use of the same trademark on the same goods, does not necessarily constitute infringement, and therefore, the presumption of TRIPS agreement is not absolute presumption, and only the relative presumption in the procedural sense, the other party may provide evidence to overthrow the contrary. The meaning of the relative presumption is that it can be temporarily relieved of the burden of proof of a party to which it is presumed to be exist, and that the other party who wants to overthrow the presumption of existence is to bear the burden of proof. The relative presumption is a law of the transfer of the burden of proof, which has the meaning of the procedure law.Trademark law judicial interpretation regulates the general attention of the relevant public as the principle of determine the same or similar of trademarks. The relevant public, refers to consumers related to a certain class of goods or services the trademark marks and other operators of the aforementioned goods or services. The judicial interpretation takes the other operators as a judge cause criticism. Because the operators have more experience and professional knowledge of the equipment, the acquaintance of trademarks is higher than consumers, and it is obviously too high to focus their ability of attention and review as a standard,. Then the scope is too small to limit the relevant public in the goods or services related consumers, because the confusion may occur before or after the purchase, in addition to consumers outside the spectator may also be confused. The Lanham act of 1962 amendments will no longer limit trademark confusion to the time of purchase, consumers to buy goods may not confused, but after the purchase,the use of goods may lead to other people--including potential consumers and the general bystander-- confused, calls after-sale confusion. There is also a more special kind of confusion called the initial confusion. After the emergence of the after-sale confusion and the initial confusion theory, the scope of related subjects and time to generate confusion continuous expand, expanding the confusion of the content, in order to laid a good foundation of using the confusion theory to identify the trademark infringement.How to judge the trademark infringement in OEM with the standard of confusion? The applicable principles include case principle, general attention principle and comprehensive review principle, the use of specific methods is to determine whether the trademark use behaviors is in trademark law sense, and judge the likelihood of confusion, taking into account the dilution behavior, assume tort liability in identified mixed existence of likelihood of confusion. The direct users of trademark is the contractor, and the direct infringement responsibility of the contract processing the firstly need to bear by the contractor. Due to the tort liability of dispense should be ruled by law, where the contractor is engaged in the direct infringement, it shall not be considered as a condition for the completion of the liability exemption from the obligation of the examination. Finally in the determination of the amount of compensation, taking into account the goods of OEM to enter the field of our country is relatively low, the actual confusion of registered trademark in our country will not be too much, and foreign clients in the actual sales of goods has the right to use the trademark, trademark infringement and damage to the domestic trademark recognition feature of the subjective may malicious weak(but does not deny the possibility of actual damage in certain conditions), therefore, should reduce the amount of compensation, after the confirm of the trademark infringement. It can be used to related expenses cost by stopping infringement, so as to balance the practice of the courts without the law.In summary, in addition to the special forms of infringement, identification of trademark infringement should based on confusion. Trademark infringement in OEM should not get special treatment due to the entrust of cross-border and products exports. This article is hope to provide a unified identification method for the judicial practice of trademark infringement in OEM. Finally, I hope as soon as possible, legislation or judicial interpretation related trademark infringement in OEM will be established, fundamentally solve trial situation of different judgments of different courts,... |
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