On April 21, 2020, China’s Supreme People’s Court (SPC) released its report on the 10 significant cases and the 50 typical cases in the field of intellectual property for the year 2019.[1]
The decision of the SPC on one of the 10 significant cases regarding trademark infringement of the trademark HONDA provides an instructive guidance for determination of trademark infringement in OEM export trading.
The infringed trademarks in this case are the three “HONDA” trademarks of Honda Motor Co. Ltd. which are registered for vehicles, motorcycles in class 12. The infringer, the Chongqing Hengsheng Xintai Trading Co. Ltd. and the Chongqing Hengsheng Group Co. Ltd. , were entrusted by the Myanmar Mei Hua Company Limited to produce and export motorcycle parts that marked with the logo “HONDAKIT” to Myanmar. The said goods were seized by the Chinese customs and the declared price of the goods were in total 118,360 US dollars.
After the People’s Court determined in the first instance that Hengsheng Trading and Hengsheng Group have infringed the registered HONDA trademarks of Honda Motor in the said case, Hengsheng filed an appeal to the court with the argument that HONDAKIT is a registered trademark of their client Mei Hua Company in Myanmar and they were authorized by their client to use the trademark on the commissioned products. The People’s Court followed the view in the second instance that this case belongs to OEM export trading, therefore the using of the trademark HONDAKIT does not constitute trademark infringement of the trademark HONDA. However, in the final retrial ruling of the SPC, the SPC reversed the ruling of the second instance Court and found that even in case of OEM export trading, the infringer's actions still constituted trademark infringement of the trademark HONDA.
The SPC also pointed out particularly in its decision, for trademark that is not registered in China, even if it is registered in a foreign country, it does not enjoy the exclusive right of a registered trademark in China. Therefore, the license or authorization for such trademark will not be protected by the Chinese Trademark Law, such license or authorization can not be used as ground for supporting non-infringement argument.[2]
For better protection of your trademark, and also for avoiding possible infringement of the trademark rights of others, we strongly recommend registration of your trademark in China especially for the companies that need OEM services in China, and would like to offer our fully support to you for the registration. Please fell free to contact us for further information.
[1] In original: http://ipc.court.gov.cn/zh-cn/news/view-320.html
[2] In original: http://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?do...