Table of Contents

The Law and Practice of Trademark Transactions

The Law and Practice of Trademark Transactions

A Global and Local Outlook

Elgar Intellectual Property Law and Practice series

Edited by Irene Calboli and Jacques de Werra

The Law and Practice of Trademark Transactions is a comprehensive analysis of the law governing trademark transactions in a variety of legal and business contexts, and from a range of jurisdictional and cross-border perspectives. After mapping out the international legal framework applicable to trademark transactions, the book provides an analysis of important strategic considerations, including: tax strategies; valuation; portfolio splitting; registration of security interests; choice-of-law clauses; trademark coexistence agreements, and dispute resolution mechanisms. Key features include: • A comprehensive overview of legal and policy-related issues • A blend of approaches underpinning strategic considerations with analytical rigour • Regional coverage of the key characteristics of trademark transactions in a range of jurisdictions • Authorship from renowned trademark experts Practitioners advising trademark owners, including trademark attorneys, will find this book to be an invaluable resource for their practice, particularly where cross-border issues arise. It will also be a key reference point for scholars working in the field.

Chapter 1: TRIPS, TRADEMARKS, AND TRADEMARK TRANSACTIONS: A FORCED RECONCILIATION?

Daniel J. Gervais

Subjects: law - academic, intellectual property law, law -professional, intellectual property law

Extract

The World Trade Organization’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) imposes limits to, and certain parameters for, the regulation by WTO Members of trademark transactions, such as licenses and assignments. WTO Members can challenge each other’s measures implementing these provisions if they believe another Member’s trademark rules violates the TRIPS Agreement using the WTO dispute-settlement system. This Chapter examines, first, the source of trademark provisions in the TRIPS Agreement and specifically whether they accord with common law or civil law trademark law and practice. It then considers the TRIPS Agreement provisions that are most likely to impact trademark transactions. After a review of Articles 15, 19 and 20 of the TRIPS Agreement, which at least indirectly impact trademark transactions, the Chapter devotes a separate part to Article 21, which provides rules applicable to licenses, transfers and assignments of trademarks. Like most other sections of the TRIPS Agreement, the trademark section is a compromise. While that compromise was not always between the same two positions, the differences between the two major legal systems, namely common law and civil law, do emerge rather frequently in the text. Indeed, one could attribute a score to determine which ‘side’ won the debate on each section of Part II of the TRIPS Agreement (that is, the part that contains the norms concerning substantive IP rights, including trademarks). For example, common law ‘scored’ a major win in copyright.