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.


Axel Nordemann and Christian Czychowski

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


Trademark transactions are part of everyday practice in Germany, and are governed by different statutory provisions under European Union Law (EU law) and German law. Under German law, specific rules under German trademark law exist, but statutes from the General Civil Law also apply. The following outline gives an overview of these existing legal rules and furthermore takes a look into different typical agreements, such as purchase agreements, license agreements, and coexistence agreements, including a view from antitrust law, as well as trademarks in mergers and acquisitions transactions and trademark securities. From a German law perspective, the word ‘transaction’ is a broader term than contract. A contract is a transaction, but a transaction is not necessarily a contract. Since a commercial transaction is essentially an agreement between two or more parties to enter into a commercial relationship that involves any kind of exchange of items of value, the relevant laws and legal issues will therefore depend on a number of factors. The same applies when transferring one of the most valuable assets of a company: trademarks. Notwithstanding the high complexity of trademark transactions, a uniform transactions codex does not exist in Germany. Representing a federation of 16 states (Länder), each with its own constitution, government, and independent court system, Germany is operating a national trademark system; unlike, for instance, the Benelux trademark system that also provides a regional basis for trademark applications.

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