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

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