經通國際智慧產權事務所

On January 1, 2006, Well Run Technologies Co., Ltd. (Well Run) entered into an OEM Agreement for manufacturing double mesh back chairs bearing the brand of the Germany Company ROHDE & GRAHL GmbH with Next Technologies Co., Ltd. (Next). After discovering that Well Run utilized the products manufactured under the said OEM Agreement to join an exhibition in Shanghai and conducted sales activities in Shanghai, Russia and Taiwan, Next filed a lawsuit to the Taiwan Taipei District Court against Well Run for breaching the said OEM Agreement. The said lawsuit was rejected by the Taiwan Taipei District Court, but Next further filed an appeal to the Taiwan High Court. On October 19, 2008, the Taiwan High Court overruled the decision issued by the Taiwan Taipei District Court and ordered Well Run to pay the penalty of NTD2.1 millions (USD62,800).

According to the terms and conditions set forth in the said OEM Agreement, the design of the double mesh chairs is confidential and restricted to the sole use of manufacturing the OEM products. Regardless of the forms or purposes, the defendant is not allowed to make any modification of the information received from Next without prior consent. Based on the comparison between the chairs Well Run produced for sales and those produced under the OEM Agreement, except the differences found between the headrests and the chair legs, the overall designs of the two types of chairs are exactly the same, including the logo that was designed for anti-infringement and anti-breach-of-OEM-Agreement.

Well Run argued that Next could not provide any design graphs or license certificate from ROHDE & GRAHL GmbH and the disputed OEM product was Well Run’s own design accumulated through the development of the OEM product. However, the said argument previously sustained by the Taiwan Taipei District Court was overruled by the Taiwan High Court.

Based on the reasons listed above, the Taiwan High Court reversed the Taiwan Taipei District Court’s decision and ordered Well Run to pay the penalty of NTD2.1 millions as compensation for breaching the OEM Agreement.

The decision is subject to further appeal.

Organized and translated by Jenny Yu

International Affairs