Annotated Leading Trademark Cases in Major Asian Jurisdictions

469 Pages·2019·2.66 MB·English

by  Kung-Chung Liu

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.
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.
Routledge Research in Intellectual Property
Available:
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Janice Denoncourt
Protecting Intellectual Property in the Arabian Peninsula
The GCC States, Jordan and Yemen
David Price and Alhanoof AlDebasi
Biodiversity, Genetic Resources and Intellectual Property
Developments in Access and Benefit Sharing
Edited by Kamalesh Adhikari and Charles Lawson
Pharmaceutical Patent Protection and World Trade Law
The Unresolved Problem of Access to Medicines
Jae Sundaram
Patent Pools, Competition Law and Biotechnology
Devdatta Malshe
Copyright Law and Derivative Works
Regulating Creativity
Omri Rachum-Twaig
The Patentability of Software
Software as Mathematics
Anton Hughts
Annotated Leading Trademark Cases in Major Asian Jurisdictions
Edited by Kung-Chung Liu
For more information about this series, please visit www.routledge.com/
Routledge-Research-in-Intellectual-Property/book-series/INTELLPROP
Annotated Leading
Trademark Cases in Major
Asian Jurisdictions
Edited by
Kung-Chung Liu
First published 2020
by Routledge
2 Park Square, Milton Park, Abingdon, Oxon OX14 4RN
and by Routledge
52 Vanderbilt Avenue, New York, NY 10017
Routledge is an imprint of the Taylor & Francis Group, an informa business
© 2020 selection and editorial matter, Kung-Chung Liu; individual
chapters, the contributors
The right of Kung-Chung Liu to be identified as the author of the
editorial material, and of the authors for their individual chapters, has
been asserted in accordance with sections 77 and 78 of the Copyright,
Designs and Patents Act 1988.
All rights reserved. No part of this book may be reprinted or
reproduced or utilised in any form or by any electronic, mechanical,
or other means, now known or hereafter invented, including
photocopying and recording, or in any information storage or retrieval
system, without permission in writing from the publishers.
Trademark notice: Product or corporate names may be trademarks
or registered trademarks, and are used only for identification and
explanation without intent to infringe.
British Library Cataloguing-in-Publication Data
A catalogue record for this book is available from the British Library
Library of Congress Cataloging-in-Publication Data
A catalog record has been requested for this book
ISBN: 978-0-367-31343-2 (hbk)
ISBN: 978-0-429-31639-5 (ebk)
Typeset in Galliard
by Apex CoVantage, LLC.
Contents
List of contributors xi
PART 1
Introduction 1
1 Features of trademark laws and cases in major Asian
jurisdictions 3
KUNG-CHUNG LIU
PART 2
Use of trademarks/likelihood of confusion on
the Internet 23
Right-maintaining use and infringing use of trademark
2 Legal consequences of non-use in Indonesia 25
PRAYUDI SETIADHARMA
3 Google’s keyword advertisement in Taiwan: no use of
trademark, but obviously unfair 35
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 46
CHRISTOPHER HEATH
5 The principles of passing off under trademark law apply to
domain names in India 58
PRASHANT REDDY THIKKAVARAPU
vi Contents
PART 3
Application of market survey in solving trademark
disputes 69
Market survey not well accepted
6 Market survey recently recognised as a persuasive tool to
solve trademark disputes in China 71
HAIJUN JIN
7 Market survey in Malaysia: an impracticable and
undesirable way to adduce evidence in trademark
lawsuit 83
CHENG PENG SIK
8 Market survey seldom accepted by Taiwanese courts in
trademark litigation 94
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 105
YOSHIYUKI TAMURA
PART 4
Limitation of trademark rights 115
International exhaustion
10 International exhaustion in Singapore: broad interpretation
of “put on the market”, yet offer for sale excluded 117
SUSANNA H.S. LEONG
11 International exhaustion of trademark rights in India 129
ARUL GEORGE SCARIA
12 The exhaustion defence to trademark infringement and
parallel importation in Malaysia 142
LIM HENG GEE
Contents vii
13 Justifiability of parallel import and trademark infringement
by imports produced in breach of a licensing agreement
in Japan 155
MASABUMI SUZUKI
14 Scope of a parallel importer’s permissible use of a
trademark in marketing activities in Korea 165
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 176
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 187
RENUKA MEDURY
17 Establishing a parody defence standard within the
framework of Taiwan’s Trademark Act 198
YACHI CHIANG
Compulsory trademark licensing?
18 Finding infringement but refusing to grant permanent
injunction under Chinese Trademark Law 208
HUAIWEN HE
PART 5
Protection of well-known marks 219
Against likelihood of dilution
19 The protection of well-known marks against dilution via
SPC in China 221
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 230
TAY PEK SAN
viii Contents
21 Trade mark dilution before and after Section 29(4) of the
Indian Trade Marks Act 240
RENUKA MEDURY
22 Taiwan IP Court decisions tend to treat likelihood of
confusion and likelihood of dilution as mutually
interchangeable 252
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 266
PRAYUDI SETIADHARMA
Against unfair competition
24 Protection of famous product configuration mark (Viagra
trademark for diamond shape and blue colour) in Korea 278
BYUNGIL KIM
25 Concurrent trademark infringement and unfair
competition in the Philippines 290
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 302
MASAHARU MIYAWAKI
PART 6
Infringement and damages 313
Infringement
27 Trademark rights-infringing comparative advertising in India 315
ARPAN BANERJEE
28 Contributory trademark infringement liability of online
open market operators based on the civil code in Korea 331
BYUNGIL KIM
Contents ix
29 Exclusive licensee’s rights in Singapore: contractual and
not proprietary against owners of marks 340
SUE-ANN LI
Defense against damages: no trademark use
30 The de-linkage and re-linkage between trademark use and
damages in China 351
LI CHEN
Defense against damages: non-occurrence of damage
31 Trademark infringement defence based on non-occurrence
of damage in Japan 361
ICHIRO NAKAYAMA
Measure of damages
32 Determination of damages for trademark infringement by
the separate unit retail prices approach in Taiwan 371
HAO-YUN CHEN
33 Measure of damages for infringement in Malaysia: lost
profits (~profit margin) times loss of sales 381
AINEE ADAM
34 Damages for trade mark infringement in Singapore: getting
what one deserves? 392
BENJAMIN THAM
PART 7
Jurisdiction and applicable law in trademark litigation 407
Cross-border litigation
35 Exclusive jurisdiction over registration claim and applicable
law to transfers of foreign trademark rights in Japan 409
YASUTO KOMADA
Cross-region litigation
36 Principles for applicable law for trademark infringement in
Taiwan applicable to cases involving Hong Kong companies 419
KUNG-CHUNG LIU