A Global and Local Outlook
Elgar Intellectual Property Law and Practice series
Edited by Irene Calboli and Jacques de Werra
Chapter 12: CHOICE-OF-COURT AND CHOICE-OF-LAW CLAUSES IN INTERNATIONAL TRADEMARK TRANSACTIONS
This Chapter deals with choice-of-court and choice-of-law clauses in international trademark transactions. Typically, there are two kinds of international transactions with regard to trademark: licensing agreements and assignment of trademarks. The former relates to the authorization that is granted by a licensor to a licensee to use a trademark with respect to a variety of products, including collateral and promotional products. The latter concerns the transfer of the ownership of a trademark registered in one country or trademarks registered in several countries by its owner to another entity. In this respect, a trademark assignment is similar to the transfer of other properties. Such transfer does not have specific relevance with regard to choice-of-court and choice-of-law, except that the assignment proceeding should generally be completed in accordance with the law of the country of registration, regardless of the law that the parties choose to apply to the assignment contract. For this reason, this Chapter focuses on the analysis of licensing agreements, which are more specifically relevant for the topic at issue. In addition to a direct licensing agreement between a licensor in Country A and a licensee in Country B, there are cases where a licensor in Country A concludes a licensing agreement with a distributor in Country B, which in turn concludes a sub-licensing agreement with a sub-licensee in Country B. There are also cases where a licensor in Country A establishes a subsidiary in Country B, and this subsidiary concludes a sub-licensing agreement with a sub-licensee in Country B.
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