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"INTRODUCTION" [2016] ELECD 351; in Calboli, Irene; de Werra, Jacques (eds), "The Law and Practice of Trademark Transactions" (Edward Elgar Publishing, 2016) xxx

Book Title: The Law and Practice of Trademark Transactions

Editor(s): Calboli, Irene; de Werra, Jacques

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781783472123

Section Title: INTRODUCTION

Number of pages: 4

Extract:

INTRODUCTION




I. TRADEMARK TRANSACTIONS: PERSPECTIVES AND CHALLENGES IN THE
GLOBAL MARKETPLACE

The importance of intellectual property transactions has grown exponentially in the
past decades as a result of the increasing financial value of intellectual property assets.
For many companies, including those operating in high technology and patent-heavy
industries, trademarks are often among the, if not the most important assets of the
business. Moreover, the importance of trademarks generally transcends national
boundaries. The continuous growth of cross-border and intercontinental trade (which
is further fostered by ever expanding online e-commerce activities) increasingly
implies that trademarks are used (and infringed) simultaneously in several countries.
This has resulted in contractual agreements relating to trademarks becoming more and
more international in the sense that they cover or relate to trademarks registered in
different countries and regions. In other words, trademark transactions have gone
global.
However, the rules that apply to trademark transactions (and to trademarks in
general) remain largely national. Accordingly, relevant variations between national
laws continue to exist even after the adoption of the Agreement of Trade-Related
Aspects to Intellectual Property Rights (TRIPS) in 1994. For example, while TRIPS
does establish that trademarks can be assigned with minimal formalities ­ i.e. without
any associated business assets ­ it remains that a number of countries continue to
require that trademarks be assigned with the associated "goodwill." Similarly, TRIPS
clarifies that trademark licensing constitutes a legitimate trademark practice ­ this
includes licensing for non-similar goods and services, an ongoing point of contention
in ...