The Law and Practice of Trademark Transactions

‘Irene Calboli and Jacques de Werra have put together a comprehensive look at trademark transactions throughout the world. Essential reading for specialists in international trademark law and for anyone who wants to understand more about laws other than their own.’
– Mark A. Lemley, William H. Neukom Professor, Stanford Law School, US

‘Commercial transactions involving trademarks, especially across borders, have received scant in-depth attention in law literature. With insights from the emerging markets of Brazil, China and India to the EU and USA via Australia and Japan, this book deals with the multifarious aspects. The reader will finish it not only with their knowledge greatly enhanced but convinced that, at least in this field, the world most certainly is not flat.’
– David Llewelyn, Singapore Management University and King''s College London, UK

‘An incisive, must-have book for every practitioner or scholar who is serious about trademark transactions. The key areas of this crucial subject are compellingly unpacked by famous authors from around the globe in a user-friendly format. Outstanding scholarship and presentation.’
– Frederick Mostert, University of Oxford, UK and Past President of the International Trademark Association

‘In addition, and to be expected, there’s excellent regional coverage of the key characteristics of trademark transactions in a range of jurisdictions. The contributors offer scholastic authorship from renowned trademark experts – giving us just what Edward Elgar publications always give us which is very high quality legal discussion throughout.’
– The Barrister Magazine

‘The publisher, Edward Elgar Publishing, must also be commended for the fine production of the book.’
– Singapore Academy of Law Journal 

‘This book is a welcome addition to the library on transactional practice, an area which is often lacking in good references. The structure of the book is clear and helpful. . . it will serve as an excellent reference book for anyone practicing in international trade mark law, or handling international business transactions.''
– Journal of Intellectual Property Law and Practice

Contributors: L. Anderson, N. Binctin, G. Bühler, R. Burrell, I. Calboli, C. Czychowski, L. Dal Molin, R.P. D’Souza, D.J. Gervais, S. Ghosh, J.C. Ginsburg, H. Guo, M. Handler, M. Höpperger, R. Jacob, S.H.S. Leong, C. Manara, J.-F. Maraia, R. Mittal, X.-T. Nguyen, A. Nordemann, M. Senftleben, S. Teramoto, J.C. Vaz e Dias, J. de Werra, N. Wilkof, D. Yokomizo

Contents:

Foreword: Sir. Robin Jacob

Introduction: Irene Calboli and Jacques de Werra

PART I: TRADEMARK TRANSACTIONS IN THE GLOBAL MARKETPLACE
A. International Framework
1. TRIPS, Trademarks, and Trademark Transactions: A Forced Reconciliation?
Daniel J. Gervais

2. Trademark Transactions and the Normative Framework of the World Intellectual Property Organization
Marcus Höpperger

B. Strategic Considerations
3. Licensing Commercial Value: From Copyright to Trademarks and Back
Jane C. Ginsburg

4. The Complexities of Domain Names Transactions: Contracts for a Market Where Value Increases with Time
Cédric Manara

5. How to Make Two Out of One – the Ins and Outs of Trademark Portfolio Splitting Transactions
Gregor Bühler and Luca Dal Molin

6. Competition, Markets, and Trademark Transactions
Shubha Ghosh

C. Valuation, Taxation, Security Interests and Bankruptcy
7. Brand Differentiation and Industry Segmentation—Drivers for Trademark Valuation in Corporate Transactions
Roy P. D’Souza

8. Trademark Transactions and International Tax Strategies
Jean-Frédéric Maraia

9. Registering Security Interests Over Trademarks in Australia: Theory and Practice
Robert Burrell and Michael Handler

10. The Intersection of Trademarks, Licenses and Bankruptcy: Ending Uncertainties in the Law
Xuan-Thao Nguyen

D. Dispute Prevention and Settlement Mechanisms
11. Out of the Shadows: The Unique World of Trademark Consent Agreements
Neil Wilkof

12. Choice-of-Court and Choice-of-Law Clauses in International Trademark Transactions
Dai Yokomizo

13. Alternative Dispute Resolution Mechanisms for solving Trademark Disputes (Mediation, UDRP, Arbitration)
Jacques de Werra

PART II: TRADEMARK TRANSACTIONS AT THE REGIONAL AND NATIONAL LEVEL
A. Trademark Transactions in Europe
14. Trademark Transactions in EU Law: Refining the Approach to Selective Distribution Networks and National Unfair Competition Law
Martin Senftleben

15. UK Perspectives on Trademark Transactions: A Liberal Approach
Laura Anderson

16. Trademark Transactions in Germany: A Continental European System Moves Towards Common Understanding with the US
Axel Nordemann and Christian Czychowski

17. French Perspectives on Trademark Transactions: from the Civil Code to the Business Law?
Nicolas Binctin

B. Trademark Transactions in North and South America
18. Trademark Transactions in the United States: Towards a De Facto Acceptance of Trading In Gross?
Irene Calboli

19. New Dress Code for Business Transactions in Brazil: Essentials and Peculiarities of Trademarks in the Spotlight
José Carlos Vaz e Dias

C. Trademark Transactions in Asia
20. Chinese Trademark Law and Trademark Transactions: A Law in Transition in the Global Economy
He Guo

21. Japanese Perspectives on Trademark Transactions: Is Expansive Trademark Practice Prevailing Over the Conservative Stoicism?
Shinto Teramoto

22. Trademark Transactions in ASEAN: Convergences and Divergences in Emerging Markets
Susanna H.S. Leong

23. Trademark Transactions in India: Exploring the Genre, Scope and Consequence
Raman Mittal

Index