Annotated Leading Trademark Cases in Major Asian Jurisdictions

Kung-Chung Liu

• Publisher: Routledge
• Year: 2019
• eBook ISBN: 9781000699746
• Edition: 1
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

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.

Part 1

Introduction

1 Features of trademark laws and cases in major Asian jurisdictions

KUNG-CHUNG LIU

1 Features of trademark laws and cases in major Asian jurisdictions

Kung-Chung Liu¹

1The author would like to thank Haoran Zhang, PhD student at Renmin University of China, for his help in finding and analysing trademark laws from PRC, Japan, and Korea.

Purposes, limitations, and topics

Trademark law is probably the most internationally harmonised area of intellectual property (IP) law, with more than a dozen international treaties and agreements signed. However, the harmonisation is mostly procedure-oriented, and substantive trademark laws of national states still differ in significant respects. How then are the trademark landscapes here in Asia? And how are the trademark laws in Asia?

As the largest and fastest-growing market on earth, while at the same time being the world factory (for both legitimate and illegitimate goods), Asia has almost unavoidably become frequently associated with “rampant piracy”. That said, it is also undeniable that the trademark landscape in Asia has undergone a sea change, at least since the publication in 2000 of The Protection of Well-Known Marks in Asia (Christopher Heath and Kung-Chung Liu, Kluwer International Law). Who could have imagined back then that China would have annual trademark applications of a staggering 5.784 million in 2017 (a 55.7% increase compared with 2016), far more than the total number in the rest of the world?² Growing interest in trademarks can also be observed in the city-country of Singapore: it registered 50,218 trademarks (9,224 owned by Singaporeans and 40,994 by foreigners) in 2015 and 53,000 trademarks (10,432 owned by Singaporeans, and 42,568 by foreigners) in 2016.³

2As of the end of 2017, In China there are a total of 173 million accumulated registered trademarks, among which 149.2 million are currently valid. See www.chinanews.com/cj/2018/01-18/8427846.shtml.

3See IPOS 2016–2017 Annual Report, 46, available at: www.ipos.gov.sg/docs/default-source/about-ipos-doc/annual-reports/ipos-ar-2016-2017-(amended).pdf. However, the number of registered trademarks in Singapore in 2017 dropped to 37,030 (8,595 owned by Singaporeans, and 28,435 by foreigners). See IPOS Annual Report 2017–2018, available at: www.ipos.gov.sg/docs/default-source/about-ipos-doc/annual-reports/ipos-ar(spread).pdf.

With regards to trademark laws in Asia, there has been little or no study to date on a cross-jurisdictional level. As the third book in the “Annotated Leading IP Cases in Major Asian Jurisdictions” trilogy organised by the Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law Singapore Management University, this volume is aimed at filling this vacuum with a more comprehensive and updated study.⁴ Admittedly, given the diverse and complex legal backgrounds of Asian trademark laws, a single-volume monograph or treatise such as this can at best provide some snapshots by choosing and analysing some of the key principles that best reflect Asian features, by following the seven-chapter structure of the first book of the trilogy:⁵ namely “use of trademarks/likelihood of confusion on the Internet”, “use of market survey evidence in solving trademark disputes”, “limitations of trademark rights”, “protection of well-known marks”, “infringement and damages”, and “choice of jurisdiction and applicable law in trademark litigation”.

4ARCIALA has helped the publication of the following two trademark-related books that have strong Asian input: Irene Calboli/Jacques De Werra (ed.), The Law and Practice of Trademark Transactions, EE, 2016; Irene Calboli/Edward Lee (ed.), Research Handbook on Intellectual Property Exhaustion and Parallel Imports, EE, 2016.

5Kung-Chung Liu (ed.), Annotated Leading Patent Cases in Major Asian Jurisdictions, City University of Hong Kong Press, 2017.

As it turns out, Part 4, Limitations of trademark rights is the longest, with nine case reports, and more or less reflects the tension between trademark rights and other competing interests. The parts that have the second highest number of case reports are Parts 5 and 6, Protection of well-known marks and Infringement and damages, respectively; each has eight case reports. Wherever appropriate, case reports within one part are further grouped under subtopics. So, for example, Part 4, Limitations of trademark rights, consists of three subtopics, namely international exhaustion, fair use, and compulsory trademark licensing. This systematic arrangement of case reports is aimed at revealing their internal logic/relatedness and enhancing the usefulness of the book.

As part of ARCIALA’s efforts to promote the study of Asian IP laws amongst IP scholars as widely as possible, the present volume permits 34 eminent Asian and European scholars and practitioners to write on 37 leading recent decisions from nine major Asian jurisdictions: People’s Republic of China (PRC), India, Indonesia, Japan, Korea, Malaysia, the Philippines, Singapore, and Taiwan.⁶ These leading cases 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. To coordinate this number of experts (most of whom do not use English as their mother language) and to maintain a uniform style and level of quality among this number of cases has been a daunting task.

628 cases are from after 2010, seven cases are from 2001–2009, with only one case from 1997 and 1968 respectively.

Each case report is divided into six sections: summary, legal context, facts, reasoning of the court, legal analysis, and commercial or industrial significance. The purpose of this structure is to give readers both an overview of the legal context and how those cases are to be interpreted legally and commercially.

Introduction to the six parts

Part 2: Use of trademarks/likelihood of confusion on the Internet

National trademark regimes vary in their definition and requirement of “trademark use”. US, European Union, and German trademark laws treat differently “right-maintaining (rechtserhaltende Benutzung) use” and “infringing use” of a trademark (rechtsverletzende Benutzung), with the latter having broader scope than the former. However, Asian trademark laws, such as those of the PRC, Japan, Korea, and Taiwan make no such distinction. Many Asian trademark regimes (including PRC, Indonesia, Korea, and Taiwan) provide that if there has been no use of the registered trademark in trade either since the date of registration or the date of its last use for three consecutive years, this is a ground for removal from the register. In the Inter IKEA System B.V. v PT. Ratania Khatulistiwa case, the Indonesian Supreme Court adopted a narrow or even harsh definition of “use in the course of trade of goods and/or services” and ordered the IP Office to remove IKEA’s undoubtedly famous trademark registrations from the register (Prayudi Setiadharma, Chapter 2).

On the other hand, use that is infringing is mostly using other’s trademarks to cause confusion amongst consumers as to whether your goods and/or services are those of the other trademark owner. However, the Taiwan IP Court has held that the two types of “use” are one and the same, and therefore Google, by providing web pages that exhibited search results for firms to place their advertisements, did not use the trademark in dispute as an indicator for goods or services, and hence could not cause a likelihood of confusion. This has been heavily criticised by academics (Kung-Chung Liu, Chapter 3).

To determine whether there exists a likelihood of confusion between two marks, one needs to adopt a step-by-step approach to first discern factually the similarity between the two marks and the similarity between the goods or services that those two marks designate separately, and then make an overall decision on the legal issue of whether there is a likelihood of confusion as a result of those similarities.⁷ In other words, there may be cases of trademark similarity without a likelihood of confusion. The issue of how to determine similarity between two trademarks was dealt with by the Japanese Supreme Court as long ago as 1968: the determination should be based on a comparison of the appearance, meaning, and pronunciation of the two trademarks. Similarity in appearance, concept or pronunciation alone does not automatically lead to similarity of marks in Japan (Christopher Heath, Chapter 4). However, the Taiwanese Supreme Administrative Court unfortunately adheres to its long-held conviction that “so long as there is similarity either in appearance, concept or pronunciation (or sound) between two registered trademarks, they are similar marks.”⁸

7Kung-Chung Liu, Trademark LawA Comparative Treatise (in Chinese), New Sharing Publishing Company, Taipei, 2014, 203. This is also the approach taken by the Singaporean courts, see David Llewelyn/Ng Hui Ming/Nicole Oh Xuan Yuan, Cases, Materials and Commentary on Singapore Intellectual Property Law, Academy Publishing, 2018, 484 et al. However, at least Taiwanese and Korean courts tend to decide the issue of similarity between trademarks from the perspective of whether they are likely to cause mistaken recognition or confusion by consumers. For Korean case law, see Byungil Kim, Chapter 24.

8Kung-Chung Liu, Trademark LawA Comparative Treatise (in Chinese), New Sharing Publishing Company, Taipei, 2014, 185.

With the Internet intruding into many areas of the commercial world, likelihood of confusion on the Internet has become an urgent issue. Prashant Reddy Thikkavarapu (Chapter 5) reports on and analyses how the Indian Supreme Court applied principles of passing off and trademark law to domain names. Thus, it is possible for a domain name owner in India to sue for either trademark infringement or passing off depending on the registration status and reputation of the disputed name.

Part 3: The use of market survey evidence in solving trademark disputes

The market survey (demoskopisches Umfragen) has proved to be a useful tool for solving trademark-related disputes in the US,⁹ Germany (since 1939), and the European Union¹⁰ but not in Asia. For example, Chinese courts did not even recognise the admissibility of market surveys as probative evidence until the Michael Jordan case decided by the Supreme People’s Court (SPC) of China in 2016 (Haijun Jin, Chapter 6). Taiwanese courts seldom accept market surveys and there has been only one case in which the Taiwan IP Court commissioned ex officio a market survey (Kung-Chung Liu, Chapter 8), and conducting a market survey in Malaysia may turn out to be a waste of time and money (Cheng Peng Sik, Chapter 7).

9See generally James Berger/Mark Halligan, Trademark Surveys: A Litigator’s Guide, Lexisnexis, 2015.

10Roland Knaak, Demoskopische Umfragen in der Praxis des Wettbewerbs- und Warenzeichenrechts, The German Association for the Protection of Intellectual Property (GRUR), 1986, 45 et al; Andrej Levin, Der Nachweis der Verkehrdurchsetzung im Markenrecht, Peter Lang, 2010, 41–42.

In Japan, the Intellectual Property High Court did not interpret a questionnaire submitted by parties to demonstrate acquired distinctiveness correctly until a 2008 decision (Yoshiyuki Tamura, Chapter 9), which recognised that some 77% of the respondents precisely identifying the applicant as the origin was sufficient to prove acquired distinctiveness of a 3D mark.

Part 4: Limitations of trademark rights

International exhaustion

With the “propertization” of trademarks, which entails giving powerful exclusive rights to the right holders, the issue of curtailing trademark rights through limitations to better protect public interests such as freedom of expression¹¹ and market competition¹² has come to the fore. Part 4 deals with this issue. One important limitation of trademark rights is through the exhaustion doctrine, which can have national, regional, and international scope. The TRIPS Agreement has provided flexibility for members to decide on the exhaustion principle they want to follow in relation to the diverse types of IPRs. Interna...

Table of contents

• Cover
• Half Title
• Series
• Title
• Copyright
• Contents
• List of contributors
• Part 1 Introduction
• Part 2 Use of trademarks/likelihood of confusion on the Internet
• Part 3 Application of market survey in solving trademark disputes
• Part 4 Limitation of trademark rights
• Part 5 Protection of well-known marks
• Part 6 Infringement and damages
• Part 7 Jurisdiction and applicable law in trademark litigation