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.


Shinto Teramoto

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


This Chapter introduces the various facets of trademark transactions under Japanese law. It connects the rules and regulations of trademarks in Japan with the applicable principles of Japanese contract law. This overview includes the most recent legal changes and should aid the understanding of those interested in this area as well as help highlight what the standards of practice are and what issues to avoid. The first Section delves into the various definitions for registered and unregistered trademark rights within Japanese law and the conventions surrounding the legal rights of ownership and enforcement. Against this background, the next Section explores the various aspects of licensing terms and provisions in trademark transactions. This Section identifies the different types of ownership and the implications of the transfers of particular rights. Additionally, this Section offers guidance as to the considerations to be aware of when structuring a licensing agreement including limitations under Japanese law and the resulting tax classifications. Finally, the last Section examines the assignability of various types of trademark rights in Japan, including the rules surrounding collective marks and the customs applicable within the context of bankruptcy or secured transactions. As with almost all legal concepts, the concept of a ‘trademark’ under Japanese law is established by carving out a certain part of a broader concept of a ‘trademark’ in the practice of trademark transactions (Figure 21.1).

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