Annotated Leading Trademark Cases in Major Asian Jurisdictions

1. Auflage 2021
ISBN: 978-1-032-08888-4
Verlag: CRC Press

Buch, Englisch, 468 Seiten, Format (B × H): 156 mm x 234 mm, Gewicht: 653 g

Reihe: Routledge Research in Intellectual Property

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.

Zielgruppe

Professional and Undergraduate

Autoren/Hrsg.

Liu, Kung-Chung

Fachgebiete

• Rechtswissenschaften Wirtschaftsrecht Gewerblicher Rechtsschutz Gewerblicher Rechtsschutz allg., Marken- und Kennzeichenrecht

Inhaltsverzeichnis

PART 1 Introduction1 Features of trademark laws and cases in major Asian jurisdictionsKung-Chung LiuPART 2 Use of trademarks/likelihood of confusion on the Internet Right-maintaining use and infringing use of trademark2 Legal consequences of non-use in Indonesia Prayudi Setiadharma3 Google’s keyword advertisement in Taiwan: no use of trademark, but obviously unfair Kung-Chung LiuConfusion and passing off4 Similarity in appearance, concept or pronunciation alone does not automatically lead to similarity of marks in Japan Christopher Heath5 The principles of passing off under trademark law apply to domain names in India Prashant Reddy ThikkavarapuPART 3 Application of market survey in solving trademark disputes Market survey not well accepted6 Market survey recently recognised as a persuasive tool to solve trademark disputes in China Haijun Jin7 Market survey in Malaysia: an impracticable and undesirable way to adduce evidence in trademark lawsuit Cheng Peng Sik8 Market survey seldom accepted by Taiwanese courts in trademark litigation Kung-Chung LiuProving acquired distinctiveness through use by questionnaire9 Three-dimensional shape of Coca-Cola bottles registrable: acquired distinctiveness evidenced by questionnaire in Japan Yoshiyuki TamuraPART 4 Limitation of trademark rights International exhaustion10 International exhaustion in Singapore: broad interpretation of "put on the market", yet offer for sale excluded Susanna H.S. Leong11 International exhaustion of trademark rights in India Arul George Scaria12 The exhaustion defence to trademark infringement and parallel importation in Malaysia Lim Heng Gee13 Justifiability of parallel import and trademark infringement by imports produced in breach of a licensing agreement in Japan Masabumi Suzuki14 Scope of a parallel importer’s permissible use of a trademark in marketing activities in Korea Won Bok Lee and Kyoung-Shin ParkFair use15 Right of a trader in India to use another trader’s mark by way that is reasonably necessary Raman Mittal16 "Denominative" use of another’s trademark can constitute prima facie "due cause" under Section 29(4) of the Indian Trade Marks Act Renuka Medury17 Establishing a parody defence standard within the framework of Taiwan’s Trademark Act Yachi ChiangCompulsory trademark licensing?18 Finding infringement but refusing to grant permanent injunction under Chinese Trademark Law Huaiwen HePART 5 Protection of well-known marks Against likelihood of dilution19 The protection of well-known marks against dilution via SPC in China Weijun Zhang20 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 San21 Trade mark dilution before and after Section 29(4) of the Indian Trade Marks Act Renuka Medury22 Taiwan IP Court decisions tend to treat likelihood of confusion and likelihood of dilution as mutually interchangeable Kung-Chung Liu and Fa-Chang ChengAgainst registration of confusingly similar trademarks23 Bad-faith registration of marks similar to well-known ones as ground for registration cancellation in Indonesia Prayudi SetiadharmaAgainst unfair competition24 Protection of famous product configuration mark (Viagra trademark for diamond shape and blue colour) in Korea Byungil Kim25 Concurrent trademark infringement and unfair competition in the Philippines Alex Ferdinand S. FiderAgainst abuse of registered trademarks26 Unregistered well-known trademark owner accused of infringement in Japan: abuse of right defence after five-year invalidation period Masaharu MiyawakiPART 6 Infringement and damages Infringement27 Trademark rights-infringing comparative advertising in India Arpan Banerjee28 Contributory trademark infringement liability of online open market operators based on the civil code in Korea Byungil Kim29 Exclusive licensee’s rights in Singapore: contractual and not proprietary against owners of marks Sue-Ann LiDefense against damages: no trademark use30 The de-linkage and re-linkage between trademark use and damages in China Li ChenDefense against damages: non-occurrence of damage31 Trademark infringement defence based on non-occurrence of damage in Japan Ichiro NakayamaMeasure of damages32 Determination of damages for trademark infringement by the separate unit retail prices approach in Taiwan Hao-Yun Chen33 Measure of damages for infringement in Malaysia: lost profits (~profit margin) times loss of sales Ainee Adam34 Damages for trade mark infringement in Singapore: getting what one deserves? Benjamin ThamPART 7 Jurisdiction and applicable law in trademark litigation Cross-border litigation35 Exclusive jurisdiction over registration claim and applicable law to transfers of foreign trademark rights in Japan Yasuto KomadaCross-region litigation36 Principles for applicable law for trademark infringement in Taiwan applicable to cases involving Hong Kong companies Kung-Chung Liu37 Private international and inter-regional law rules for trademark infringement in mainland China Lizhou WeiDomestic litigation38 Remedying mischief in deciding jurisdiction favouring the plaintiff in India Gargi Chakrabarti and Saahil Dama

Über Autor(innen)

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.