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.


Gregor Bühler and Luca Dal Molin

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


Trademarks are key assets for many businesses. Most companies own trademarks and use protected trade names, logos, and designations to distinguish their products and services in the marketplace. As such, trademarks can be a significant driver for mergers and acquisitions, and the trademark portfolios of the companies involved often play an important role in these transactions. One of the key issues in these transactions is how to separate the trademark portfolio affected by the transaction. This can be especially tricky if trademarks will have to be used not only by one of the parties following the completion of the transaction, but by both of them. For instance, take a large public company that wants to divest its consumer electronic division. The consumer brand is very popular and a key asset in the deal. The buyer made it a condition that it can use this brand following the acquisition. The seller, however, has used the same brand in other divisions that will not be divested. Although the seller is willing to eventually transition to a new brand, it needs a certain time to do so. Hence, the seller and the buyer will have to use the same brand for some time following the transaction. In such a situation, the parties need to agree on a way of coexisting, both of them with the same trademarks, following their transaction. This is usually done by means of a trademark portfolio splitting or trademark co-existence agreement.

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