OEM, as a product of China's reform and opening up, is a major trade mode of China's economic opening to the outside world and plays a very important role in China's economic and trade field. In the context of the global financial crisis, it is of profound practical significance to guide and regulate the smooth development of OEM processing enterprises.

How should OEM enterprises prevent intellectual property infringement disputes and trademark infringement? In an interview with reporters, the judge who has long tried intellectual property cases said that processing enterprises should pay attention to the following issues in the use of OEM trademarks.

1. The written contract shall be signed in detail

In foreign trade, a contract is an effective evidence to determine the rights and obligations of both parties. Some enterprises entrusted with the processing of OEM products have only made oral agreements with the entrusting party, and have not even signed the minimum written contracts, let alone contracts that strictly define the rights and obligations of both parties.

In order to reduce and avoid the occurrence of trademark infringement disputes over OEM processing, both parties to the trade must sign a written entrusted processing contract, which shall specify in detail and strictly determine the respective names, residences, contracted objects, the quantity and quality of the objects, the source and quantity of raw materials, quality requirements, remuneration, contracting methods, the time limit, place, methods, acceptance methods and standards of contract performance, and liabilities for breach of contract.

In addition, the trademark right shall also be specified in detail, and it shall be agreed that if the trademark provided by the entrusting party involves infringement and compensation, the entrusted party shall not bear relevant liabilities. This can maximize the protection of their own rights and interests from infringement.

2. The client's certificate of rights shall be reviewed

For the entrusted enterprise, the certificate of trademark right of the entrusted enterprise is its identity card. To cooperate, it is necessary to clarify its identity first. Review the certification of trademark rights, including whether the entrusting party has the right to use the trademark at the final destination of the products, whether the trademark is registered in China and still valid, whether the entrusting party has the right to authorize and whether the authorization is protected by Chinese laws. The entrusting party shall provide the entrusted party with its trademark and relevant materials for registration. If the registered trademark belongs to others, the entrusting party must provide legal trademark use license.

A major feature of trademarks is that they are strictly regional. The trademark rights granted by a country or region according to its own or local trademark laws and regulations are only effective in that country or region, but not binding. Even if the entrusting party can provide the processing party with relevant evidence that its trademark has been legally registered in other countries, but has not provided evidence of registration in China, there is still the possibility of trademark infringement. If the entrusting party has not obtained the registered trademark right of the trademark in China, and the trademark is just registered in China by others, according to the provisions of the trademark law, after the trademark is approved and registered in China, its exclusive right to use the registered trademark is protected by law in China. If the enterprise uses the trademark in the production process without the permission of the trademark registrant, it also constitutes infringement. Therefore, no matter whether the goods produced by OEM are sold in China or not, As long as the trademark registered by others in accordance with the law is used without permission during production, it will constitute trademark infringement.

In order to avoid trademark infringement disputes, before signing the processing contract, both parties should not only strictly examine the above qualifications, but also check whether there are similar trademarks in China and whether the trademarks are registered in China.

3. The manufacturer's exemption clause shall not be ambiguous

In OEM contracts, we often see such clauses: "if the products commissioned by the entrusting party have any legal problems, the entrusting party shall bear all the responsibilities, and the processing party shall not bear any legal responsibilities", that is, the so-called "exemption clause".

Some OEM enterprises understand that with such provisions, the legal liability for trademark infringement will have nothing to do with themselves, but the reality is not the case.

According to the general principles of China's civil law and the provisions of the contract law, an agreement between civil subjects that violates the provisions of the law is invalid, and the provisions in the contract that violate the provisions of the law are also invalid. Once the infringement is released, the above "exemption clause" cannot exempt the manufacturer from the liability for trademark infringement. Therefore, when the OEM manufacturers sign the contract, the entrusted enterprise must make clear who should bear the losses caused by trademark infringement, not just the so-called "exemption clause".

(if there is any infringement, please inform us to delete it in time. Thank you!)