OEM Industry
By China IPR SME Helpdesk
随着全球化程度的提升，商品的生产制作可以在全球任何一个国家进行并销往国际上任何一处地区。为了节省人力物力等开支，不少大型企业都选择OEM的生产形势，即找原始设备生产商进行代工生产。OEM(Original Equipment Manufacturer)是受托厂商按来样厂商之需求与授权，按照厂家特定的条件而生产。所有的设计图等都完全依照来样厂商的设计来进行制造加工。生产者不直接生产产品，而是利用自己掌握的"关键的核心技术"，负责设计和开发、控制销售"渠道"，具体的加工任务交给别的企业去做。国内习惯称为协作生产、三来加工，俗称加工贸易。它是国际大公司寻找各自比较优势的一种游戏规则，能降低生产成本，提高品牌附加值。这种方式是在电子产业大量发展起来以后才在世界范围内逐步生成的一种普遍现象，微软、IBM等国际上的主要大企业均采用这种方式。
中国的代工产业从过去的传统服装纺织行业迅速发展到汽车零部件配件、化妆品以及高新IT设备，以及电子设备产品等，作为世界领先级的制造商，中国企业在几乎所有的行业内都吸引了来着欧美的许多中小型企业在国内设立公司，开展合作，利用中国的生产优势，以相对较低的劳动力成本和经验丰富的生产商来生产和制造产品。尽管目前中国的知识产权法律保护方面已然完善，但侵权行为依然司空见惯，屡禁不止，因此保护与产品相关的知识产权是成功地打开中国代工市场战略的关键步骤。为了更好的保护自己的品牌的在华利益，防止代工企业与自己的品牌出现利益摩擦或窃取行为，在中国及早注册商标，对自己的合法知识产权进行保护是相当必要的。除了我们过去讲过的一些申请流程之外，在代工行业请代工公司来进行生产的企业，还可以受到海关保护，中国海关官员会调查商品的进出境流向，并对可能被侵权企业发出警报，中小企业可以查看可以货物，确认它们是否侵权，并要求扣留货物，在一定程度上保护了企业利益。
在与代工厂合作方面，通过注册有效商标，企业还可以向代工工厂授予许可证，取得许可证的代工工厂，将有更多权益，也有更大的动力去对付其他的造假者。此外，从创作产品、设计开始，中国的法律就可以对产品的版权进行保护，那些通过代工厂生产产品的公司可以有资格获得版权保护，虽然版权是自动授予的，但是当发生纠纷行为时可以占据主动。此外为了避免一些残次品流向市场，企业应当要求候选的代工工厂签署一份保密协议，以保证商业计划和产品信息，在对话或电子邮件链接中不被披露的。但是保密协议不是万无一失的，它可能无法防止信息泄露或商标被侵权。在进入谈判程序前，先在中国注册知识产权，注册商标，保护自身知识产权，是避免产生这些问题的关键步骤。另外，在中国，被许可代工的代工工厂，被认为在整个商业环节中有利害关系，因此可以对侵权者采取行动，所以，代工厂有责任和权利调查市场上的假货或伪劣产品，并采取必要的行动。
The term Original Equipment Manufacturer (‘OEM’) is used to describe a company that only makes a part of a product, or a subsystem, to be used in another company's end product. The extension also designates the agreement whereby one company commissions another to manufacture products according to certain specifications and to affix a trade mark on such products. The said products are delivered to the commissioner who sells them in the market under his own name. The letters ‘OEM’ therefore denote both the manufacturer and the act of commissioning the finished product to a third party.
China’s OEM sector developed rapidly from its roots in the apparel industry to a sector comprising of automotive parts, cosmetics, and ICT equipment. As the world’s leading manufacturer, China attracts manufacturing contracts from global customers, including many European SMEs, in almost every industry by capitalising on Chinese OEM’s core strengths - relatively low labour costs, experienced manufacturers, and skilled workers.
Even though China’s IPR laws and regulations have improved over the past years, IP infringements are still commonplace in the country and thus protection of intellectual of property rights related to the goods is a crucial element of a successful Chinese OEM strategy.
Protect your Trade Mark
In order to enjoy trade mark protection in China, SMEs need to register their trade mark. China follows a first-to-file system that grants trade marks to the first individual or company to register it. Thus, a foreign trade mark is not automatically protected in China, and vice versa. Before considering OEM production in China and certainly before beginning the OEM process, SMEs should file all trademarks with Chinese authorities either directly in China or through international processes ( through Madrid Agreement). Once the trade mark is registered with China Trade Mark Office (CTMO), SMEs can authorise the OEM factory to begin work safely. In case the trade mark is not registered before the production process begins then SMEs leave themselves vulnerable to IP piracy.
With a valid trade mark registration, SMEs can:
• Grant a license to the OEM factory. Whether the license is ‘exclusive’ (others cannot use the trade mark in China for as long as the contract lasts), ‘sole’ (only the licensee and SME can use it) or ‘normal’ (i.e., nonexclusive) depends on the negotiations and SMEs’ trust in the factory. Generally, a non-exclusive license is slightly safer as it allows more freedom for terminating a contract and switching to a different factory. On the other hand, the OEM will have more power and more incentive to act against possible counterfeiters if it has an exclusive license.
• Record the trademark with the General Administration of Customs (GAC – China Customs) and benefit from the Custom's ex officio protection system, whereby officers survey the inbound and outbound flow of merchandise and warn SMEs of any suspicious shipments. After the warning has been issued, the SME has three days to confirm whether it is an infringement and ask for detention of goods.
• Take enforcement measures against trade mark infringement. Only registered trademarks enjoy the exclusive right to prevent others from using, manufacturing, selling, storing, etc. products bearing identical or similar marks on identical or similar products without authorisation. The trade mark owner can either file an administrative complaint with the local Administration of Industry and Commerce (AIC) or file a lawsuit before the People’s Court. In general, administrative actions are time and cost-effective, in particular if SMEs have a straightforward case. For complicated scenarios, or if you are seeking damages, using the courts is a better method.
In order to remain valid, a trade mark must be used. If not used for more than three consecutive years, the mark can be revoked. The OEM need only affix the trade mark to protect it from being revoked for non-use. In order to emphasize the function of trade mark, the revised Trademark Law stipulates that the use of trade marks consists in "affixing trademark on goods, packages or containers etc. … to distinguish the origin of commodities”.
Don’t forget to register the design
Products manufactured by an OEM factory are usually made in accordance with specific drawings, blueprints etc., provided by the foreign company. It is also advisable to file in advance for registration of design patents in order to protect these industrial designs.
SMEs should be aware that Chinese law requires that design patents be ‘novel’, which means the design must not have been disclosed anywhere in the world before the filing of the application. The registration of a design is a pre-condition for enforcing your rights in an event of an infringement. The European concept of unregistered design, which protects the owner for three years even if there is no registration and which allows a legal action against third parties who reproduce a design, does not exist in China.
Copyright is important in the OEM Industry
Chinese law protects copyright from the moment of creation of the product. Some products produced via OEM may qualify for copyright protection, however, in China, standards for receiving copyright protection are quite high.
Although copyright is automatically granted, registration is possible and highly recommended to facilitate the submission of evidence of ownership of the copyright in case of a dispute or enforcement action. Copyright should be registered as early as possible as the courts tend to disregard registrations if they have been made after proceedings have begun. Registration of a copyright is a simple and low-cost procedure with the Copyright Protection Centre of China. Proving ownership of the copyright is crucial and will require preservation of original copies of all documents establishing the creation of the work (e.g. sketches, drafts, and various prior iterations of the work) as well as contractual documents showing the chain of ownership over the rights.
Use contracts to protect your IP
OEM contracts, like all contracts, need to be properly drafted by legal professionals in order to avoid interpretation issues or omission of important points. IP-related clauses should definitely be included and carefully defined in the contract to protect your interests. To ensure these issues are addressed, before signing an OEM contract, some basic questions should be raised and should be discussed between the commissioner and the OEM factory to clarify, for example:
• Who owns the prototype produced by the OEM factory based on the design provided by the commissioner?
• Who is responsible for final products infringing a third party’s IP (e.g. trade mark, design etc.)?
• Handling of certain contingencies, for example if the factory does not destroy returned or flawed products and instead circulates them in market.
SMEs should require the candidate OEM factory to sign a Non-Disclosure Agreement (NDA) to maintain the secrecy of their business plan and IP information disclosed in conversations or email chains, etc. However, NDAs are not fool-proof and may fail to prevent information leaks or trade mark squatting. Registering IP before entering negotiations, let alone entering China, will be the key to avoid these issues in terms of trade mark and design protection. It’s recommended to ensure the appropriate protection of trade secrets and know-how via contractual and other means.
In order to mitigate IP risks in OEM contracts, following points should be considered carefully:
Definition of the commissioned product
The definition of the product to be commissioned is a key element of the contract. It is absolutely necessary to define in meticulous detail the products that are to be produced by the OEM factory, including qualities and quantities. Designs or drawings, and in some cases moulds and toolings, should be checked or provided, and validated by the commissioner to confirm that products follow the specifications required.
Overproduction and defective products
In case of over-production, the contract should state that production shall be stopped and excess goods or defective goods shall be destroyed at the expense of the OEM factory unless the commissioner gives prior consent to purchase or stock them.
IP use and confidentiality
To prevent unauthorised use, contracts should determine to what extent the OEM factory is authorised to use the IP rights of the commissioner. This should include the use of designs, patents, trademarks and know-how. A monetary penalty for violation of IP restrictions mentioned in the contract is often the best way to mitigate risks and can prevent the circulation of counterfeit or unauthorised products which ruin your brand’s reputation and credibility.
IP enforcement
In China, the licensee is considered an "interested party” and, as such, allowed to take action against infringers. Your agreement may specify that the OEM factory has a duty or right to survey the market and to take whatever actions are necessary. However, in an OEM relationship where all products are exported, OEM factories are often not sufficiently proactive and may not monitor the domestic market for infringement.
Termination of the contract
Termination of the contract is a key consideration. The contract must provide post-termination obligations, particularly in relation to inventory liability, continuity of supply, and records retention. For example, tooling disputes are among the most common sources of contention in manufacturing agreements. Manufacturers commonly refuse to return tooling unless compelled to by, for example, a significant lump sum penalty for such a refusal.
Arbitration vs. domestic courts
To resolve disputes between the commissioner and OEM factories, the parties have the choice between local courts and arbitration. To ensure that neutrality will be fully respected, SMEs are advised to choose arbitration. Arbitration centres used could be either abroad or in China. China now has arbitration centres capable of guaranteeing a fair arbitration trial, such as the China International Economic and Trade Arbitration Commission or the Shanghai International Arbitration Commission. Parties involved may also agree on an arbitration centre located outside of China without legal issues as China is a member of the New York Convention and arbitration awards granted by foreign arbitration centres are enforceable in China.
