Trademark Law
7 Principle of Good Faith
AB, ELLASSAY-20140814/20170306-82 (Trademark acquired by bad faith cannot be enforced against legitimate use)
B, Jordan-20161207 (Business success built on bad faith acts cannot be used to justify trademark registration)
B, Nissan-20111130 (Deliberate imitation of other’s trademark is not fair use)
10 Trademark registration - Legality
10.1.2 Name of Foreign Country
B, Nike Jordan-20151202 (Whether a foreign trademark is identified as the name of a foreign country should be ascertained based on the knowledge and perception of the relevant public)
11 Trademark Registration - Distinctiveness
11.1.1 Generic Name
B, Saridon-20090113 (A mark may be registered if it ceases to be a generic name during the trademark review procedure)
11.1.2 Descriptive words
B, BLUETOOTH-20161227 (Certification trademark also needs to be distinctive in order to be registrable)
B, BEST BUY-20111028 (Trademark with descriptive elements is not necessarily denied distinctiveness as a whole)
11.1.3 Other circumstances of lack of distinctive features
B, Hermes-20121213 (Shape of a product is distinctive only if it can function as a source identifier of such product)
11.2 Distinctiveness acquired through use
B, Nestle Bottle-20141024 (A unique design does not automatically become inherently distinctive. Court should weigh in the use of such design by other operators of the same industry when ascertaining the acquired distinctiveness thereof)
13 Well-known trademark
B, Nissan-20111130 (Well-known trademark is entitled to be granted cross-category protection)
14 Parameters for recognition of well-known trademark
B, IPHONE-20151227 (News report not intended for the promotion of the cited mark cannot be admitted as evidence for well-known trademark recognition)
B, Nissan-20111130 (Parameters established to prove well-known trademark status shall not be followed mechanically)
C, NIKON-20101228/201208 (Well-known trademark recognition is not an independent claim, but rather a finding necessitated by the circumstances of the case)
B, APPLE I-20091111 (Protection of well-known trademark should not be weakened, due to an existing registration in the same class)
B, Viagra I-20090624 (A mark not used on the owner’s own initiative is not eligible to be recognized as unregistered well-known trademark)
C, KODAK-20060406/200805 (Well-known trademark recognition is not an independent claim)
15 Preemptive trademark application filed by agent
15.1 Agent
B, Dr. Turtle-20151118 (Article 15 of the Trademark Law shall also apply if the represented party filed application prior to that of the agent.)
B, Lehmanbrown-20140916 (Article 15 of the Trademark Law shall apply even if the represented party has not used its trademark)
30 Prior registration
B, NEXUS-20161223 (A trademark co-existence agreement cannot be discarded simply on the ground of being detrimental to the consumers)
B, LAFITE II—20161223 (The Chinese transliteration of a foreign trademark may be protected)
B, Dr. Turtle-20151118 (Co-existence of trademarks is allowed, provided that certain requirements are met and the trademarks are distinguishable in the market)
B, Forevermark-20141128 (Chinese words trademark and English word trademark can be found similar.)
B, Montagut I-20131213 (The reputation of a prior trademark may extend to a later mark.)
B, APPLE II-20100910 (When assessing the similarity between the opposed mark and the cited mark, Court may take into consideration the similarity between the opposed mark and a prior registered mark owned by the applicant of the opposed mark.)
C, RITZ-20080722/200903 (Similarity should be assessed by considering distinctiveness, reputation and similarity of the marks per se.)
B, CAILE-20091022 (Trademarks used on different goods that are not overlapping in circulation are not likely to mislead the relevant public)
32 Prior right
32(1) Prior right – copyright
B, Shark Device-20171213 (Prior trademark registration certificate may be admitted as preliminary evidence to prove that the trademark applicant is entitled to claim his rights, as an interested party, over the copyright of the sign involved.)
B, GREGORY (Eagle device)-20160921 (The trademark registrant is not necessarily the copyrighter of the trademark drawing)
32(1) Prior right – right of name, trade name
B, Jordan II—20171221 (The portrait requesting protection of prior right should be identifiable.)
B, Jordan I-20161207 (Right of name may be protected as prior right under the Trademark Law)
B, PARKERHANNIFIN-20140813 (A company may be granted trade name protection over its affiliated company’s name that has a certain reputation.)
B, ZF-20140717 (Trade name may be protected as prior right)
32(2) Trademark that has already been used and has certain influence
B, Sony Ericsson-20101231 (Passive use of a trademark does not fall under trademark use in the sense of the Trademark Law)
B, San Lie Tong – 20090525 (A mark cannot claim trademark right when it was at the stage of being a generic name)
43 License
C, Picasso--20150930-C-201702 (The latter licensee who knows about the prior license is not a third party acting in good faith)
45 Relative ground
45.1 Statute of limitations
B, Crayon Shin-chan-20081209 (The five-year limitation should be calculated as of the date of registration other than the entry-into-force date of the 2001 Trademark Law)
48 Trademark Use
B, PRETUL-20151126 (Affixing trademark on OEM products is not trademark use)
B, Kung Fu Panda-20141127 (Not used as a trademark, no trademark infringement)
B, Nissan-20111130 (Trademark use should meet certain requirements.)
B, Viagra II-20090624 (The shape of a product offered for sale in non-transparent packaging cannot function as a source identifier.)
C, Yamaha I-20020806/200303 (Using other’s trademark in contract and product catalog to promote products of its own, constitute trademark infringement)
49 Trademark revocation
49.2(1) Non-use
B, Wanchai Ferry-20151202 (Token use of a trademark does not constitute trademark use)
B, Castel-20111217 (The illegality of the business activities in connection with the use of a trademark is irrelevant when adjudicating an application for cancellation based on non-use)
57 Trademark infringement
57.1.2 Similarity & Confusion
BC, Crocodile I-20101229/201112 (Similarity does not necessarily lead to confusion)
C, Montagut II-20040706/200512 (Using one’s combination trademark by splitting the components may constitute trademark infringement)
57.1.6 Contributory infringement
C, E•LAND-20110425/201201 (Internet service provider may bear joint and several liability with online sellers)
C, Crocodile II-20091026/201010 (Market operator may be held liable for trademark infringement for its failure to fulfill duty of care.)
57.1.7(1) Trade name – Prominent use
A, Tongdefu-20131218/20160520-58 (Non-prominent use of trade name does not constitute trademark infringement)
B, Gyoza no Ohsho-20100624 (Prominent use of a company name that is identical with or similar to another's registered trademark on identical or similar goods so as to cause misidentification, constitutes trademark infringement)
C, Starbucks-20061220/200706 (Using other’s well-known trademark as trade name so as to cause misidentification, constitutes trademark infringement)
57.1.7(2) Well-known trademark
C, NIKON-20101228/201208 (Well-known trademark may be granted cross-category protection.)
C, KODAK-20060406/200805 (Well-known trademark may be granted cross-category protection.)
57.1.7(3) Domain name and E-commerce
A, Little Thumb-20130219/20140623-30 (The domain name registered prior to the registration date of the cited mark is justified)
C, LAFITE I-20110817/201207 (Domain name that is similar to other’s registered trademark may constitute trademark infringement)
57.1.7 Other infringement
C, VICTORIA’S SECRET-20130423/201312 (Distributor using brand owner’s trademarks during the process of selling genuine products does not constitute trademark infringement, provided such use causes no confusion)
59 Defence
59.1 Fair use
A, LUJIN-20090805/20150415-46 (The generic name of a commodity with regional characteristics should be determined according to regional instead of national standards)
63 Remedy
63.1(1) Damages based on the loss of the plaintiff
C, Yamaha I-20020806/200303 (Decline in the plaintiff’s sale cannot be solely attributed to the alleged infringing act.)
63.3 Statutory damages
C, LAFITE I-20110817/201207 (The statutory damage applies, when neither the loss of the plaintiff nor the profit of the defendant can be ascertained.)
C, Montagut II-20040706/200512 (The statutory damage applies, when neither the loss of the plaintiff nor the profit of the defendant can be ascertained.)
64 Defence to damages
64.2 Fair sale – no damages
B, PUMA-20101215 (The seller shall bear liability for indemnification in proportion to its own act)
67 Criminal Liability
A, SAMSUNG-20150908/20170306-87 (Assembling counterfeit SAMSUNG mobile phones and accessories procured by wholesale may constitute the crime of counterfeiting registered trademark.)
Unfair-competition Law
2 Principle of Good Faith
AC, Baidu Popup-20100320/20150415-45/201008 (Forcibly adding commercial popup before a search engine delivers the search result may constitute unfair competition.)
6 Confusion
6.1.1 Name, packaging and decoration of goods
ABC, Ferrero-20080324/20150415-47/200806 (Famous product should be ascertained by taking comprehensive considerations including the fact that it is already known internationally)
C, LAFITE I-20110817/201207 (The only corresponding Chinese name of a famous product may constitute the unique name of such famous product)
B, M&G-20101203 (A shape itself is inseparable from the product may still constitute unique decoration of a famous product)
6.1.2 Company name & name
A, Little Thumb-20130219/20140623-30 (Prominent use of other’s trademark and/trade name constitutes unfair competition.)
A, China Youth Travel-20120320/20140623-29 (Abbreviation of a company name may be granted protection in accordance with the Anti-unfair Competition Law)
C, NIKON-20101228/201208 (Company name may be granted cross-category protection under the Anti-unfair Competition Law.)
C, L’Oreal-20081219/200911 (Using other’s trade name with an intention to freeride other’s reputation constitutes unfair competition)
6.1.4(1) Trademark against Trade name
A, Tongdefu-20131218/20160520-58 (Registering in good faith other’s non-well-known trademark as its own trade name does not constitute infringement, provided that it does not cause confusion)
C, NIKON-20101228/201208 (Owner of well-known trademark may challenge other’s use of its mark as trade name.)
B, Gyoza no Ohsho-20100624 (The court may order, under certain circumstances, the cessation of prominent use to stop the infringement, other than ordering change of the litigious company name)
6.1.4(2) Trademark against domain name
C, Philips-20031225/200409 (Registration and using a domain name that is similar to other’s trademark may constitute unfair competition)
C, Dupond-20011115/200203 (Domain name infringing a well-known trademark)
8 False advertising
A, Tongdefu-20131218/20160520-58 (Claiming unjustified ties with the historical heritage of a brand may constitute false advertising)
17 Remedy
17.4 Statutory damages
ABC, Ferrero-20080324/20150415-47/200806 (The statutory damage applies when the loss of the plaintiff and the proceeds of the defendant are difficult to ascertain.)
C, VICTORIA’S SECRET-20130423/201312 (Statutory damage under the AUCL)
General Procedure
Standing
A, Little Thumb-20130219/20140623-30 (The Anti-unfair Competition Law does not require that the competitors must be in direct competition relationship)
B, ZF-20140717 (Other than licensees and/or successors, the term "interested party" also includes other entities having a stake in the case.)
Jurisdiction
A, Little Thumb-20130219/20140623-30 (Violating administrative rules does not deprive one of the right to file unfair competition litigation.)
B, NEW BALANCE-20170727 (The place where online purchased goods are destined cannot be deemed as the place where the infringing acts takes place so as to establish jurisdiction)
B, ADIDAS-20101108 (The jurisdiction regulation for civil and commercial cases does not apply to IP cases involving foreign elements.)
BC, Four Pillars-20090115/200908 (Court in the places where the infringing products are sold has no jurisdiction over trade secret lawsuits)
Non bis in idem
B, Suntory-20171228 (Retrial application filed against a new judgement shall be dismissed if it is purely an execution of the previous judgement)
B, CAILE-20091022 (There has to be new facts or legal basis for the TRAB to accept a new review application for a case where there has been res adjudicata)
Evidence
B, Nissan-20111130 (Evidence issued by the party itself could be corroborated by evidence adduced by other parties.)
B, BEST BUY-20111028 (New evidence re genuine use adduced during administrative litigation may be admitted)
Change of circumstances
B, ADVENT-20111124 (Revocation of the cited mark will change the result of the review of refusal)
Correction of the defects
B, prAna-20170509 (Court may ascertain ex-officio the finding of important facts omitted in the administrative decision)
B, SATAM -20160627 (A judgement may be upheld, provided that its result is correct, even with defect in application of law)
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