What do import and export enterprises need to know about the intellectual property protection of "parallel imports?

This yearAt the beginning of July, the Nansha District People's Court of Guangdong Free Trade Zone publicly pronounced the first case involving intellectual property disputes over parallel imported goods in Guangdong Free Trade Zone. The plaintiff Opel Company was German OBO Bettermann GmbH & Co.KG. The company (hereinafter referred to as the German OBO company) in mainland China set up a wholly-owned subsidiary. German OBO Company authorized Opel Company to use the trademark involved ("OBO" Registered Trademark No. G663678) exclusively in mainland China, and at the same time authorized Opel Company to protect the trademark separately in its own name. The plaintiff Opel said that the OBO series brand lightning protection devices sold in mainland China were imported from Germany and sold by itself or through regional authorized distributors. Defendant Shifu's sale of the lightning arrestor marked with the trademark in question was not sold by Opel or its distributors. Shifu argued that the products involved were imported from legitimate dealers in Singapore through legal customs clearance procedures, and that the products involved were genuine goods rather than counterfeit products. The court found that the parallel import of the products involved was not illegal, did not infringe on Opel's trademark rights, and did not constitute unfair competition, and rejected all the claims of the plaintiff Opel.

The World Trade Organization (WTO) believes that "parallel import" refers to "importing products legally produced abroad into China without the consent of the intellectual property right holder". Generally speaking, parallel import has two characteristics: first, parallel import goods are legally obtained, not smuggled, fake or counterfeit goods; second, the price of parallel import goods is often lower than that of domestic agents. Regarding the question of whether parallel imports infringe intellectual property rights, the relevant laws and regulations between countries are not completely consistent.

China's "Trademark Law", "Patent Law" and other intellectual property laws and regulations have not beenThe issue of intellectual property protection of "parallel imported" goods is clearly stipulated. In judicial practice, the court will generally make comprehensive considerations based on the purposes and principles of intellectual property laws and regulations, and combined with the specific facts of the case and other factors to reasonably balance intellectual property rights. The interests of owners, importers and consumers, as well as the relationship between the protection of right holders and the protection of social public interests. In previous cases, most of the "parallel import" goods were determined not to infringe domestic intellectual property rights. For example, in the above-mentioned cases, the court held that there are no clear provisions on the definition and legality of such products in China's trademark law, and there are no clear prohibitive provisions. In the absence of substantial differences between imported products and domestic products, the sale of imported products involved in the case that can be substituted with domestic products does not impair the quality assurance function of the trademark. Shifu imported the products involved in the case produced or authorized by the German OBO company through normal trading behavior, fulfilled the normal import declaration procedures, did not violate China's public policy and legal prohibitions, and should not be subject to judicial negative evaluation.

Britain and Germany do not have complete restrictions."Parallel importation", in which the United Kingdom is based on the principle of "default licensing", that is, at the time of the first sale of the patented product, if the patentee or its licensee does not explicitly impose restrictive conditions, it means that any use of the patented product by the purchaser will not constitute an infringement of the patent right. Based on the theory of exhaustion of rights, Germany believes that as long as the patentee puts his patented product on the market and has already benefited from the patent right, his rights are subsequently exhausted, and parallel imports are generally not infringing.

The United States and Japan are more stringent on the issue of parallel imports, emphasizing the regional nature of intellectual property rights. The patentee has the right to prevent parallel importers from selling at home. The reason is that the patentee's sales abroad do not give buyers the right to bring their products into the country. Therefore, in the United States and Japan, parallel imports are explicitly prohibited.

In international trade, import and export enterprises should control the trade behavior, and make detailed and clear provisions on the handling of intellectual property rights in the contract. At this stage, our country is not clearly defined.In practice, the problem of "parallel import" can be dealt with through the contract law according to the contract signed by both parties, so as to protect the rights and interests of enterprises. For trade in countries that prohibit parallel imports such as the United States and Japan, we must do a good job in intellectual property research to prevent infringement of other people's intellectual property rights.