1st Edition
Annotated Leading Trademark Cases in Major Asian Jurisdictions
There has been little or no study on trademark laws in Asia on a cross-jurisdictional level. This book aims at filling the existing gap and provides a comprehensive overview of trademark laws of eight major Asian jurisdictions and their most-updated trademark case law. The book analyses six of the principal issues that best reflect Asian features in trademark law and trademark development.
The cases in the book are principally the most authoritative decisions, usually the first to deal with certain new emerging issues, or the first to apply particular statutory provisions in the respective jurisdiction. Also included are a small number of direction-changing, outlying or even controversial decisions. Each case report is divided into six sections: summary, legal context, facts, reasoning of the court, legal analysis, and commercial or industrial significance.
Readers will find this book useful in both its overview of the legal context and how those cases are to be interpreted legally and commercially.
PART 1 Introduction
1 Features of trademark laws and cases in major Asian jurisdictions
Kung-Chung Liu
PART 2 Use of trademarks/likelihood of confusion on the Internet
Right-maintaining use and infringing use of trademark
2 Legal consequences of non-use in Indonesia
Prayudi Setiadharma
3 Google’s keyword advertisement in Taiwan: no use of trademark, but obviously unfair
Kung-Chung Liu
Confusion and passing off
4 Similarity in appearance, concept or pronunciation alone does not automatically lead to similarity of marks in Japan
Christopher Heath
5 The principles of passing off under trademark law apply to domain names in India
Prashant Reddy Thikkavarapu
PART 3 Application of market survey in solving trademark disputes
Market survey not well accepted
6 Market survey recently recognised as a persuasive tool to solve trademark disputes in China
Haijun Jin
7 Market survey in Malaysia: an impracticable and undesirable way to adduce evidence in trademark lawsuit
Cheng Peng Sik
8 Market survey seldom accepted by Taiwanese courts in trademark litigation
Kung-Chung Liu
Proving acquired distinctiveness through use by questionnaire
9 Three-dimensional shape of Coca-Cola bottles registrable: acquired distinctiveness evidenced by questionnaire in Japan
Yoshiyuki Tamura
PART 4 Limitation of trademark rights
International exhaustion
10 International exhaustion in Singapore: broad interpretation of "put on the market", yet offer for sale excluded
Susanna H.S. Leong
11 International exhaustion of trademark rights in India
Arul George Scaria
12 The exhaustion defence to trademark infringement and parallel importation in Malaysia
Lim Heng Gee
13 Justifiability of parallel import and trademark infringement by imports produced in breach of a licensing agreement in Japan
Masabumi Suzuki
14 Scope of a parallel importer’s permissible use of a trademark in marketing activities in Korea
Won Bok Lee and Kyoung-Shin Park
Fair use
15 Right of a trader in India to use another trader’s mark by way that is reasonably necessary
Raman Mittal
16 "Denominative" use of another’s trademark can constitute prima facie "due cause" under Section 29(4) of the Indian Trade Marks Act
Renuka Medury
17 Establishing a parody defence standard within the framework of Taiwan’s Trademark Act
Yachi Chiang
Compulsory trademark licensing?
18 Finding infringement but refusing to grant permanent injunction under Chinese Trademark Law
Huaiwen He
PART 5 Protection of well-known marks
Against likelihood of dilution
19 The protection of well-known marks against dilution via SPC in China
Weijun Zhang
20 Dilution of a well-known trademark as ground for refusal of registration of an identical or similar mark for different goods or services in Malaysia
Tay Pek San
21 Trade mark dilution before and after Section 29(4) of the Indian Trade Marks Act
Renuka Medury
22 Taiwan IP Court decisions tend to treat likelihood of confusion and likelihood of dilution as mutually interchangeable
Kung-Chung Liu and Fa-Chang Cheng
Against registration of confusingly similar trademarks
23 Bad-faith registration of marks similar to well-known ones as ground for registration cancellation in Indonesia
Prayudi Setiadharma
Against unfair competition
24 Protection of famous product configuration mark (Viagra trademark for diamond shape and blue colour) in Korea
Byungil Kim
25 Concurrent trademark infringement and unfair competition in the Philippines
Alex Ferdinand S. Fider
Against abuse of registered trademarks
26 Unregistered well-known trademark owner accused of infringement in Japan: abuse of right defence after five-year invalidation period
Masaharu Miyawaki
PART 6 Infringement and damages
Infringement
27 Trademark rights-infringing comparative advertising in India
Arpan Banerjee
28 Contributory trademark infringement liability of online open market operators based on the civil code in Korea
Byungil Kim
29 Exclusive licensee’s rights in Singapore: contractual and not proprietary against owners of marks
Sue-Ann Li
Defense against damages: no trademark use
30 The de-linkage and re-linkage between trademark use and damages in China
Li Chen
Defense against damages: non-occurrence of damage
31 Trademark infringement defence based on non-occurrence of damage in Japan
Ichiro Nakayama
Measure of damages
32 Determination of damages for trademark infringement by the separate unit retail prices approach in Taiwan
Hao-Yun Chen
33 Measure of damages for infringement in Malaysia: lost profits (~profit margin) times loss of sales
Ainee Adam
34 Damages for trade mark infringement in Singapore: getting what one deserves?
Benjamin Tham
PART 7 Jurisdiction and applicable law in trademark litigation
Cross-border litigation
35 Exclusive jurisdiction over registration claim and applicable law to transfers of foreign trademark rights in Japan
Yasuto Komada
Cross-region litigation
36 Principles for applicable law for trademark infringement in Taiwan applicable to cases involving Hong Kong companies
Kung-Chung Liu
37 Private international and inter-regional law rules for trademark infringement in mainland China
Lizhou Wei
Domestic litigation
38 Remedying mischief in deciding jurisdiction favouring the plaintiff in India
Gargi Chakrabarti and Saahil Dama
Biography
Kung-Chung Liu is Lee Kong Chian Professor of Law (Practice), Director of the Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA) at Singapore Management University and also Professor at Renmin University of China.
"This book provides rich insights on current trademark issues in major Asian jurisdictions, and covers the most vital and practical topics on trademark law. The authors are the leading scholars in Asia, offer engaging and thought-provoking analysis. With the book’s valuable comparative perspective, it is an excellent reference for practitioners and academics to understand the legislative trends and how different jurisdictions interpreted and applied the rules." — Gi-Kuen Jacob Li, Assistant Professor, Institute of Law for Science and Technology, National Tsing Hua University, Taiwan
"Given the rapid growth of the Asian market, protecting trademark rights in Asia has become more important than ever before. Against this backdrop, Annotated Leading Trademark Cases in Major Asian Jurisdictions presents a much-needed examination of Asian trademark law through in-depth analysis of landmark cases. Led by Professor Kung-Chung Liu, contributors to this volume explore theoretically significant and practically relevant issues concerning Asian trademark law. This volume is a major contribution to trademark scholarship."— Haochen Sun, Associate Professor of Law, The University of Hong Kong
