The Law and Practice of Trademark Transactions
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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.
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Chapter 10: THE INTERSECTION OF TRADEMARKS, LICENSES AND BANKRUPTCY: ENDING UNCERTAINTIES IN THE LAW

Xuan-Thao Nguyen

Extract

Apple Corps, the record label founded by the Beatles in London, brought an action against Apple Inc., the Silicon Valley-based company over the trademark agreement entered by the parties back in 1991. Apple Inc. paid $26 million to Apple Corps for the coexistence right to use the Apple trademark. The agreement provided that Apple Inc. had the exclusive right to use the Apple trademark in connection with electronic goods, computer software, data processing, and data transmission services, while Apple Corps had the exclusive right to use the Apple trademark ‘on or in connection with any current or future creative work whose principle content was music and/or musical performances, regardless of the means by which those works were recorded, or communicated, whether tangible or intangible’. Both companies coexisted in their distinct fields of use, and each built goodwill in the trademark within their markets. As technologies changed in the digital music business, the two companies’ fields of use grew close to each other’s market, although they did not foresee such a possibility at the time they executed the coexistence agreement. Apple Inc. developed their new products, iPod and iTunes software and music, resulting in litigation brought by Apple Corps for breach of the coexistence agreement. In the litigation, Apple Inc. prevailed, as there was no consumer confusion and no evidence to support the breach argument.

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