Annotated Leading Trademark Cases in Major Asian Jurisdictions

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.

PART 1 Introduction 1 Features of trademark laws and cases in major Asian jurisdictions 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 3 Google’s keyword advertisement in Taiwan: no use of trademark, but obviously unfair Confusion and passing off 4 Similarity in appearance, concept or pronunciation alone does not automatically lead to similarity of marks in Japan 5 The principles of passing off under trademark law apply to domain names in India 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 7 Market survey in Malaysia: an impracticable and undesirable way to adduce evidence in trademark lawsuit 8 Market survey seldom accepted by Taiwanese courts in trademark litigation Proving acquired distinctiveness through use by questionnaire 9 Three-dimensional shape of Coca-Cola bottles registrable: acquired distinctiveness evidenced by questionnaire in Japan 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 11 International exhaustion of trademark rights in India 12 The exhaustion defence to trademark infringement and parallel importation in Malaysia 13 Justifiability of parallel import and trademark infringement by imports produced in breach of a licensing agreement in Japan 14 Scope of a parallel importer’s permissible use of a trademark in marketing activities in Korea Fair use 15 Right of a trader in India to use another trader’s mark by way that is reasonably necessary 16 "Denominative" use of another’s trademark can constitute prima facie "due cause" under Section 29(4) of the Indian Trade Marks Act 17 Establishing a parody defence standard within the framework of Taiwan’s Trademark Act Compulsory trademark licensing? 18 Finding infringement but refusing to grant permanent injunction under Chinese Trademark Law PART 5 Protection of well-known marks Against likelihood of dilution 19 The protection of well-known marks against dilution via SPC in China 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 21 Trade mark dilution before and after Section 29(4) of the Indian Trade Marks Act 22 Taiwan IP Court decisions tend to treat likelihood of confusion and likelihood of dilution as mutually interchangeable Against registration of confusingly similar trademarks 23 Bad-faith registration of marks similar to well-known ones as ground for registration cancellation in Indonesia Against unfair competition 24 Protection of famous product configuration mark (Viagra trademark for diamond shape and blue colour) in Korea 25 Concurrent trademark infringement and unfair competition in the Philippines 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 PART 6 Infringement and damages Infringement 27 Trademark rights-infringing comparative advertising in India 28 Contributory trademark infringement liability of online open market operators based on the civil code in Korea 29 Exclusive licensee’s rights in Singapore: contractual and not proprietary against owners of marks Defense against damages: no trademark use 30 The de-linkage and re-linkage between trademark use and damages in China Defense against damages: non-occurrence of damage 31 Trademark infringement defence based on non-occurrence of damage in Japan Measure of damages 32 Determination of damages for trademark infringement by the separate unit retail prices approach in Taiwan 33 Measure of damages for infringement in Malaysia: lost profits (~profit margin) times loss of sales 34 Damages for trade mark infringement in Singapore: getting what one deserves? 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 Cross-region litigation 36 Principles for applicable law for trademark infringement in Taiwan applicable to cases involving Hong Kong companies 37 Private international and inter-regional law rules for trademark infringement in mainland China Domestic litigation 38 Remedying mischief in deciding jurisdiction favouring the plaintiff in India