Annotated Leading Trademark Cases in Major Asian Jurisdictions PDF
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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: Intellectual Property, Finance and Corporate Governance 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
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