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.


Martin Senftleben

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


Harmonized European Union (EU) trademark law contains rules on trademarks as objects of property, including transfers and licenses, in Articles 16 to 24 of the Community Trade Mark Regulation (CTMR) and a provision on licensing in Article 8 of the Trade Mark Directive (TMD). The rudimentary nature of this set of EU rules clearly comes to the fore in Article 16(1) of the CTMR: unless the CTMR provides harmonized norms, questions concerning Community Trade Marks (CTMs) as objects of property must be answered – for the whole EU territory – on the basis of the national law of a single EU Member State. The applicable national law is to be determined in accordance with the rules on points of attachment given in Article 16 of the CTMR. The seat or domicile of the trademark proprietor serves as the primary point of attachment. An establishment can be used as an alternative. As the EU trademark office – the Office for Harmonization in the Internal Market (OHIM) – has its seat in Alicante, Spain, the national law of Spain applies in default of a seat, domicile or establishment. The regulation of trademark transactions in the EU thus relies on a harmonious interplay of harmonized EU law and individual national legislation. This configuration of the system places a particular responsibility on the Court of Justice of the European Union (CJEU). When interpreting harmonized EU rules, the CJEU ought to consider the impact of its decision on the proper functioning of national law.

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