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.


Laura Anderson

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


Marks, signs and trade names have been an important part of commerce in the United Kingdom (UK) since the time of the Medieval guilds. The UK Trade Marks Register was established in 1876 and the first Registration on 1 January 1876 was The Bass Brewery’s famous red triangle logo, which is said to be the world’s first registered logo. This mark is still registered and in use today. Trademarks are often hugely valuable assets. A key part of that value is the ability of a proprietor to deal with its trademark and to transact freely. The legal system in the UK supports this ability to transact and provides significant freedom for trademark owners. Transactions relating to trademarks can, of course, take many different forms; a merchandising arrangement, a sponsorship deal, a co-branding collaboration, the sale of a brand, or a brand finance deal are all transactions with trademarks at their core. The role of the practitioner is to analyze the nature of any proposed transaction to establish whether it involves the transfer of a property right (an assignment); a permission to use (a license); the creation of a charge, mortgage, or other security (a security interest); or simply a contractual arrangement as to how a trademark proprietor will use its own mark (for example, under a trademark co-existence agreement). The practitioner will then seek to reflect relevant statutory provisions and, importantly, help to ensure appropriate clarity and control so as to preserve the value of the trademarks that are the subject of the transaction.

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