A Global and Local Outlook
Elgar Intellectual Property Law and Practice series
Edited by Irene Calboli and Jacques de Werra
Chapter 1: TRIPS, TRADEMARKS, AND TRADEMARK TRANSACTIONS: A FORCED RECONCILIATION?
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.