OEM Products Distribution
Current state of the law in China US companies in this situation have a few options. First, US companies can file new applications every three years to avoid a cancellation action based on non-use. This strategy, however, is expensive and imperfect. Alternatively, the question arises – does OEM manufacturing in China constitute use of a trademark sufficient to defeat a cancellation action based on non-use? Like every good legal question, the answer is “it depends.” The law in this area has shifted over the last several years, and OEM use has been more consistently recognized as valid trademark use in non-use cancellation proceedings. In Distinct Seasons Sd. Bhd. v. Trademark Review and Adjudication Board, the Beijing Higher People’s Court held in March 2017 that, although the OEM products had not yet been circulated in the Chinese market and were only exported for sale, the registrant’s use was sufficient to defeat a cancellation action. The court, however, specifically stated tha...