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 13: ALTERNATIVE DISPUTE RESOLUTION MECHANISMS FOR SOLVING TRADEMARK DISPUTES (MEDIATION, UDRP, ARBITRATION)

Jacques de Werra

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

Extract

The challenges and costs of litigating global trademark (and other intellectual property) disputes before national courts are well-known. This explains and justifies the growing attention paid to alternative dispute resolution (ADR) mechanisms that are developed in order to solve trademark (and other intellectual property) disputes, which are of particular importance in an international setting because of the interest that parties to an international trademark contract (potentially an international trademark license) may have in defining in advance to which alternative dispute settlement body they shall submit any potential dispute that may arise between them (instead of submitting their dispute to litigation). This chapter will discuss certain alternative dispute resolution mechanisms (outside of arbitration) that may be used in order to solve trademark disputes (see below B), before turning to the use of arbitration (see below C). In light of the overall focus of this book on trademark transactions, this chapter will specifically address certain practical contractual issues that must be carefully assessed when considering the use of arbitration for solving (international) trademark disputes. Trademark disputes can be solved by the submission to various alternative dispute resolution mechanisms outside of the courtroom and outside of arbitration, and specifically to mediation (see below 1) and to the Uniform Domain Name Dispute Resolution Policy (UDRP) with respect to certain trademark-related Internet domain name disputes (see below 2), whereby the UDRP has served as a model for other intellectual property-related domain name disputes (see below 3).

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