You are looking at 1 - 10 of 13 items

  • Author or Editor: Metka Potocnik x
Clear All Modify Search
This content is available to you

Metka Potočnik

This content is available to you

Metka Potočnik

The Introduction to the book introduces the scope, aim and background to the issues discussed. In its brief literature review, the introduction explains the suggested gap this book aims to contribute to. Particularly this book examines the cross-section between intellectual property law (trade mark law) and international investment law. Whereas there has been a broader acceptance of private commercial intellectual property disputes being resolved in international commercial arbitration, the investment arbitration cases are still more rare. They are also more controversial, as they potentially raise issues of conflict between private investors and states. The book introduces in its introduction the main concepts it will use: the “toolbox of translators”. These analytical tools originate from international investment law and are here applied to trade mark law. This approach will assist the reader with the analysis of trade mark investment disputes. The introduction also briefly signposts the content of the book.

This content is available to you

Metka Potočnik

Chapter 1 follows the relevant issues as identified in the Introduction with illustrations through several case studies. Case details are presented separately for different jurisdictions and offer some detail on the national court cases, arbitration claims, and WTO disputes, where available. Chapter 1 introduces the tobacco plain packaging regulation as implemented in Australia, Uruguay and the United Kingdom. Most importantly, it highlights the facts of the Philip Morris cases. It then turns to regulation of non-communicable diseases in Peru and Chile. Next, Chapter 1 introduces the case study of infant formula internationally and in South Africa. Finally, Chapter 1 explores the recent approach in the United States to trade marks, which are derogatory to certain groups in the society (the Redskins and The Slants cases). Where claims are only speculative, this chapter identifies the possible outline of trade mark investment arbitration (should there ever be one in the future).

You do not have access to this content

Metka Potočnik

Chapter 2 explores the philosophical justification and the legislative history of trade marks on the international level in order to support the view that there is the need for a special adjudicatory approach to trade mark investment arbitration. Specifically, this chapter also includes a historical overview of the inclusion of trade marks in investment treaties, from 1850s onwards. In most jurisdictions, the justification of the legal protection of trade marks rest on the “law and economy” or utilitarian approach, as originally presented by Landes and Posner. Most trade mark laws differentiate between trade marks and brands, although this distinction is not clearly adopted by other types of regulation (i.e. tobacco regulation). The history of legislative instruments protecting trade marks demonstrates that ever since the Paris Convention, the character and nature of trade marks is defined in trade mark laws and not in other treaties (for example Bilateral Investment Treaties).

You do not have access to this content

Metka Potočnik

This chapter identifies two preliminary points in a trade mark investment arbitration: firstly, the jurisdiction of the arbitral tribunal and secondly, the applicable law in trade mark investment arbitration. On jurisdiction, this chapter focuses on the question of a “qualifying investment” under international investment treaties and the ICSID Convention. The case of Bridgestone v Panama is a new case which offers more substantive guidance on the matter. With respect to the applicable law, the chapter explores the roles of the international law and the domestic law of the host state in investment arbitration. The domestic law of the host state is particularly important when determining the scope and nature of trade mark rights as a protected investment asset. Finally, this chapter explores the duty of arbitrators to know the law (iura novit curia/arbiter) in investment arbitration and finds that at present, no such duty exists.

You do not have access to this content

Metka Potočnik

Chapter 4 is divided into two parts (A and B). Part A considers the scope of rights in a trade mark and goodwill (as emanation of brand value) and unlike other writings in the area of trade mark law, identifies these rights through a particular lens of “attributes of property”. This lens is also used as a “toolbox of translators.” As later seen in Chapter 5, this lens (test) is known to investment arbitration community and is particularly useful in the evaluation of potential investment treaty violation claims. Chapter 4 considers trade mark rights as regulated internationally (TRIPS), and nationally (Australia, Uruguay, United Kingdom (EU) and United States). In Part B this chapter considers internal and external limitations to trade marks and goodwill. Its conclusions inform the later analysis of investor claims that states have taken away their trade marks or treated them unfairly (explored in Chapter 6).

You do not have access to this content

Metka Potočnik

Chapter 5 is divided into two parts (A and B). Part A explores expropriation and FET protection under investment treaties (i.e. substantive protection). The expropriation analysis starts with the concept of rights capable of expropriation. Next, this chapter focuses particularly on the elements and tests for indirect expropriation and the possibility of partial expropriation. The book argues that the test “substantial deprivation of attributes of property” is particularly useful in cases of trade mark investments and this structure is followed in Chapters 4 and 6. Under FET, this chapter examines the protection of investors’ legitimate expectations. Part B considers limitations to investment protection and explores the extent to which state’s right to regulate is safeguarded. Absent express treaty wording to the contrary, arbitral tribunals continue to hold great discretion on the extent to which they attach the importance (if any) to the public character of the measures taken.

You do not have access to this content

Metka Potočnik

Chapter 6 presents a practical application of the tests explored in previous chapters. It explores the nuances of trade mark expropriation claims, parameters of FET violation in cases of trade mark registrations and finally investigates state’s right to regulate and limit trade mark rights in public interest. This analysis is done for all case studies from Chapter 1 and with the use of the “toolbox of translators” or the “attributes of property” lens and represents the most original part of the book, as it introduces an approach, not yet known in the literature. Despite the award rendered in the Philip Morris v Uruguay case, this book demonstrates that a more structured approach to trade mark investments is needed, because it will result in solutions faithful to principles enshrined in trade mark law. Importantly, the distinctive character, the average consumer and the market context of allegedly expropriated trademarks is not to be overlooked.

You do not have access to this content

Metka Potočnik

This chapter explores the existing legal framework for tools, which would allow arbitrators in trade mark investment disputes to approach the adjudication in a balanced manner. It offers an analytical approach, which is normatively underpinned by the international rule of law as found in the 2012 UN Declaration (thick definition). Cases presented in Chapter 1 should be adjudicated in the broader normative framework of international law. That means that arbitrators should avoid an approach, which limits their consideration to the provisions of international investment treaties only. It is argued here that particularly in cases of trade mark investments, arbitrators have an increased duty of knowing the law (iura novit curia/arbiter). Only when arbitrators know the rules of trade mark law (distinctive character, the importance of the average consumer and market context) is there a possibility to avoid the over- or under-protection of trade marks under investment treaties.

You do not have access to this content

Metka Potočnik

Chapter 8 explores the remedies available to trade mark proprietors, in the event that their claims under investment treaties have been successful on the merits (with links to ILC Draft Articles). Importantly, this overview and investigation is not done in isolation and solely through the prism of investment law. This chapter highlights some principles for remedies available and known to practitioners in traditional intellectual property litigation. Here, the most common remedy is an injunction, which orders the defendant to change its behaviour in the market (specific performance). Differently, the remedy of specific performance in investment arbitration is unlikely to succeed. Instead, the most commonly awarded remedy for expropriation of FET violation is a monetary compensation. Here the book offers some considerations for arbitrators when evaluating the fair market value of trade marks or brands. This chapter also offers some observations on moral damages as compensable in investment treaty arbitration.