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.


Jean-Frédéric Maraia

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


Trademarks are very often an important source of revenue for their holders. So it is not surprising to find that tax authorities, in Switzerland and abroad, are anxious to know whether profits generated by the use of trademarks (as in the case of other intangible assets) have been duly declared and taxed and, in an international context, duly allocated between the States concerned. In 2013, the Organization for Economic Co-Operation and Development (OECD) published an Action Plan on Base Erosion and Profit Shifting, a report now known as the BEPS report (BEPS report). This document marks the start of fundamental changes in the area of international taxation. It seeks to establish consistency in the taxation of company profits at an international level, through a rigorous application of tax rules based on economic substance and greater transparency. The OECD’s action plan will be presented initially in part B of this chapter, showing the future importance, if this is not already the case, of its impact on the tax treatment of transactions involving trademarks and international fiscal strategies. In this part, the review of the plan, however, will be primarily a general overview, as the details of the specific actions related to certain transactions or fiscal strategies will be examined in detail in the other parts of this chapter.

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