Why You MUST Have A China OEM Agreement.
Recently received an email from CLB co-blogger Steve Dickinson, who is based in China. I have removed all of the names and any other potential identifiers, but have retained the gist of the story. My firm has gone through nearly this exact same scenario at least a half a dozen times over the last few years. Here it is:I met with X Company [new client] yesterday. In our discussion, X Company asked about supply agreements. I said they are necessary and that one important part was to provide no copying, no placing of products in the supplier show room and no placing of the product in the supplier catalog. As a remark, I said: "The reason you need all this is to try to prevent the supplier from copying your line and selling it as their own. You will really feel bad when you go to a trade show and see you entire product line for sale with all your products on display and in your suppliers own catalog. This morning, X Company called me to say they had just received a call from one of their employees attending a trade show in a city outside China. Their supplier from China was at the show. On display was X Company's entire product line down to the part numbers with all the products on display and all of this in their supplier's own catalog. So now I am trying to deal with this issue.Another interesting point. They actually have a really complete supply agreement from a New York law firm. The agreement is subject to New York law, excludes CISG [United Nations Convention on Contracts for the International Sale of Goods] and provides for UNCITRAL arbitration in Hong Kong. Meaning, of course, that by law they have absolutely no remedy in China against the offending party. In fact, their 18 page supply agreement does not deal with any of the real issues involved in China and it takes the stance that China and Chinese law do not exist. I do not see us being able to get any sort of injunctive relief here to stop this Chinese company quickly. Bottom Line: Get a good supply (OEM) agreement that provides you with the possibility of securing injunctive relief in China. This oftentimes can be achieved using a carve out from arbitration. This provision will be what will allow you to go to the Chinese courts for an order requiring your supplier to do something such as stop exhibiting and selling your products.













