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Dissertation
Immaterialgüter- und Wettbewerbsrecht

Trade Mark Right Against Goods Destined For Export?

Whether trade mark law prohibits the use of a trade-marked sign to products destined for export. This issue becomes relevant in the OEM cases. However, there is no consensus on this point under Chinese law. The article pinpoints the dilemma underlying the current judicial practice and put forward a more predictable and nuanced solution.

Letzte Änderung: 28.02.18

 Law and Practice concerning the OEM Dispute in China
The OEM trade mark dispute emerges in China with the boom of the international manufacturing outsourcing. In the past 15 years, the Chinese judicial practice has accumulated numbers of OEM cases, but the jurisprudence thereof is still in chaos. The evolvement of the OEM judicial practice can be divided into three periods, subject to the personnel change of the head of the SPC IP Tribunal. Despite some exceptions, it is safe to say that the dominating judicial policy is influenced by the personal preference of the head of the IP Tribunal. During the JIANG court, the judicial policy was in principle stringent, and most OEM cases were decided in favour of the native trade mark owner (the initial period). The stringent judicial policy was greatly liberalized during the KONG court, under whose influence the SPC adopted the pro-OEM-industry approach in the landmark case PRETUL (the second period). With Judge SONG taking the position as the head of the SPC IP Tribunal, a more balanced judicial policy is pursued; the highlight of the duty of pre-examination in several recent cases signifies the advent of the new period.  
Each approach has its pros and cons. Notwithstanding, we must admit that the status quo about the OEM-related judicial practice in China is still far from satisfactory. The doctrinal and theoretical analysis of each approach in this part discloses the downside of the existing wisdom. A better solution is yet to come.


Proposed solution
My proposed idea, what I term as a refined strong-protection approach, shares the same standpoint as the traditional strong-protection approach, but with a more coherent doctrinal basis comparing to the latter. As I believe, the export-oriented OEM activities shall be prohibited, which is not only inherently required by the law but also not necessarily detrimental to the national economy in the long run. First, those OEM activities having trade mark problems take up, after all, a very small percentage of the whole OEM business; in most cases, there is no dispute regarding the trade mark ownership. Second, the ‘labels clause’ does not fundamentally prohibit the local manufacturers from undertaking the manufacture outsourcing from foreign companies; what is outlawed is only the production of the brand labels and using these labels in relation to the products. The local manufacturers are thus still free to manufacture and export unlabeled products, so long as the relevant products are not in breach of other IP right in China. If they wish, the foreign companies can easily circumvent this rule by producing the brand labels themselves and assembling the labels to the products in its own country. Finally, the proposed solution will increase the legal certainty; the predictability of the OEM dispute will help to reduce the unnecessary costs spent in negotiations and litigations.

Personen

Doktorand/in

Lizhou Wei

Doktorvater/-mutter

Prof. Dr. Annette Kur

Forschungsschwerpunkte

Interessensausgleich