Can marks on OEM goods infringe domestic trademarks?

By David Lee, Chang Tsi & Partners

Does the use of marks on original equipment manufacturer (OEM) goods made for foreign purchasing companies that are similar or identical to Chinese registered trademarks constitute trademark infringement?

Prior to the new Trademark Law taking effect on 1 May last year, this had been a controversial issue. This column discusses whether this issue still persists since the new law came into effect.

Confusion under prior law

Under the old law, article 52 formed the legal basis for determining whether an OEM’s use of a mark constituted trademark infringement. Article 52, clause 1 set out, “Using a mark that is similar to or identical with a registered trademark in respect of the similar or identical goods” without a licence from the trademark registrant is an infringement of the exclusive right to use a registered trademark. This clause was too simplistic and confusing, which resulted in an inconsistent interpretation by the courts.

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David Lee is a partner and a client manager of Chang Tsi & Partners

(Chang Tsi & Partners)

7/F and 8/F, Tower A, Hundred Island Park

Bei Zhan Bei Jie Street, Xicheng District

Beijing 100044, China

Tel: +86 10 8836 9999

Fax: +86 10 8836 9996