Originally published
Made in
Although
With its Government campaign Made in
Counterfeit production by OEMs
OEM simply means that a manufacturer is commissioned to manufacture products and attach the commissioner's trade mark to same. Often these products do not enter the Chinese marketplace and are exported abroad.
Obviously,
Stopping counterfeit production is a difficult task. Although a registered (foreign) trade mark is required in order to be able to commission an OEM, it is not the OEM's job to assess whether such trade mark is obtained in good faith. As such, bad faith registrations (either Chinese or foreign) form a basis for justifying counterfeit production. On top of that, the Supreme Court ruled that OEM should not be regarded as infringing the legitimate rights of the owner of the Chinese trade mark, when such goods are not made available in the Chinese marketplace, but exported to other countries. In other words: use by an OEM was not considered to infringe Chinese trade marks.
It, however, now looks as if things are going to change because of the Made in
Amended
Since
Important amendments include:
- Bad faith filings without a genuine intention to use shall be rejected
- Bad faith can serve as basis for opposition/revocation
- It is illegal for trade mark agencies to represent bad faith filers<>li/>
- There are increased filing fees and penalties/compensation to put off bad faith filers
- There are penalties for bad faith trade mark infringement claims
Blocking bad faith filers will be of enormous assistance in fighting counterfeit production.
In the important
Background
Decision
The
It concluded that it is not necessary to make the goods available to Chinese consumers (end users) to ascertain use of the trade mark, as the relevant public can also consist of third parties who are labelling, transporting and distributing the trade marked products. In addition it mentioned that Chinese consumers could also encounter these products when travelling abroad.
Good news
The decision stretches the concept of the relevant public and trade mark use. This, however, is in favour of legitimate trade mark owners who can now tackle counterfeit production on the basis of their Chinese trade marks.
There is also another advantage of OEM use. OEM use will likely now be more than sufficient to meet the Chinese use requirements (provided that sufficient evidence is collated). That means that even if you do not sell your products in
Risks
However, there are also risks involved. If you are currently producing in
What to take away
- Take active action to combat bad-faith trade marks
-
Collate sufficient evidence of your own OEM use to be able to prove genuine use of your trade mark in
China (in the form of licence agreements, purchase orders, delivery notes, customs declarations and dated product photos). -
Act first and do not wait to register your trade mark if you intend to use or produce in
China .
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
LS2 8DD
Tel: 113233 0100
Fax: 113233 0101
E-mail: Lcurtis@hgf.com
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