1st Edition

Annotated Leading Trademark Cases in Major Asian Jurisdictions

Edited By Kung-Chung Liu Copyright 2020
    468 Pages 8 B/W Illustrations
    by Routledge

    468 Pages 8 B/W Illustrations
    by Routledge

    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


    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


    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