China: Has the Dust Settled on OEM Trademark Infringement?

China’s SPC reaffirms that OEM does not infringe on Chinese trademarks

In a recent landmark decision, the Supreme People’s Court (“SPC”) reversed the remarkable appeal decision in the Dongfeng trademark case about Original Equipment Manufacture (“OEM”). The SPC reiterates its view expressed in its November 2015 landmark ruling in the Pretul case, holding that branded products produced through OEM generally cannot infringe upon Chinese trademarks, as long as the goods are not put into commercial circulation within China, and are exported to the trademark owner abroad.

This SPC judgment furthermore cleared up confusion about the “reasonable duty of care” for OEM producers, imposed by the reversed judgement issued in December 2015 by the Jiangsu Higher People’s Court. The reversed judgment came only one month after the SPC’s ruling in Pretul, and held that the respondent committed trademark infringement because it failed to meet its reasonable duty of care in reviewing the status of the marks affixed on the OEM products ordered by the brand owner abroad.

The SPC disagrees that the OEM producer in the Dongfeng case failed to meet its reasonable duty of care, and arrives at a non-infringement ruling, reaffirming that pure OEM use of trademarks is not deemed trademark use.

 

button

 

Authored by Katie Feng, Eugene Low and Helen Xia

Contacts
Zhen (Katie) Feng
Office Managing Partner
Shanghai
Eugene Low
Partner
Hong Kong
Helen Xia
Partner
Beijing

 

This website is operated by Hogan Lovells Solutions Limited, whose registered office is at 21 Holborn Viaduct, London, United Kingdom, EC1A 2DY. Hogan Lovells Solutions Limited is a wholly-owned subsidiary of Hogan Lovells International LLP but is not itself a law firm. For further details of Hogan Lovells Solutions Limited and the international legal practice that comprises Hogan Lovells International LLP, Hogan Lovells US LLP and their affiliated businesses ("Hogan Lovells"), please see our Legal Notices page. © 2022 Hogan Lovells.

Attorney advertising. Prior results do not guarantee a similar outcome.