Publication Trademark

Book Review: The Law and Practice of Trademark Transactions: A Global & Local Outlook, Eds. Irene Calboli & Jacques De Werra

tmOver the years this blog has covered several interesting issues pertaining to trademark transactions. Illustratively these include disputes arising out of trademark transactions (the Tiger and Maaza disputes), taxation of trademark assignments (the recent Fosters case), arbitration of IP disputes (the Telemax case & the IPRS v. ENIL case), co-ownership of trademarks after the splitting of family businesses and general strategies on licensing and securitisation of trademarks. The increasing value of trademarks to Indian businesses can also be gauged from the role played by trademarks in recent scandals such as the Kingfisher loan scandal where a loan was granted against a trademark which lost most of its valuation due to its financial situation.

All of these cases demonstrate the complexity of trademark transactions, a subject area which lies at the intersection of trademarks, contracts, arbitration, bankruptcy, competition law, valuation, private international law and taxation. It is usually difficult to find books which focus on such a niche practice area. I was therefore more than keen on reviewing this new book – The Law and Practice of Trademark Transactions: A Global & Local Outlook. Featuring contributions from around the world, the book is jointly edited by my colleague Irene Calboli, Deputy Director, ARCIALA, SMU along with Jacques De Werra, Professor at University of Geneva.

This book isn’t like Westlaw’s Trademark throughout the World which is more in the nature of a primer on trademark law in various countries and which is also unbelievably expensive. Rather this book covers a wide range of different issues within the subject of trademark transactions. Each chapter is authored by different contributors – both academics and practitioners. Part I is on the issue of trademark transactions in the global marketplace and has four sections with chapters dealing with the following topics: international frameworks, strategic considerations, valuation, taxation, security interests and bankruptcy, dispute prevention and settlement mechanism. Part II is on the issue of trademark transactions at the regional and national level and has three sections, with chapters dealing with the following topics: trademark transactions in Europe, North & South America and Asia, including jurisdictions like China and Japan. The Asia section has an informative chapter on trademark transactions in India by Dr. Raman Mittal who teaches law at Delhi University.

Reviewing a book like this, which is written together by 23 different authors, is complicated. It is however safe to say that the editors Calboli and Werra have accomplished a herculean task in presenting perspectives from a diverse range of views on a complicated issues cutting across different practice areas. Indian practitioners will most likely be interested in the country-wise chapters which have mostly been authored by leading practitioners in their respective jurisdictions and which flag important issues in each jurisdictions. Some of the other chapters on the business aspects such as the chapter on transactions splitting trademark portfolios, valuation, taxation etc. will be of interest to both legal and business practitioners. Two of the theoretical chapters by Jane Ginsburg and Shubha Ghosh are particularly interesting. Ginsburg covers the issue of overlap between trademark and copyright in protection of characters and the licensing issues arising out of such transactions. Ghosh’s chapter proposes applying an existing theory of non-price competition developed by Albert Hirschman (exit, voice and loyalty) to trademark transactions. I think it is an idea with much promise.

While it is unfair to expect a work of this nature with 23 different authors and topics to cover more than it already has, I do wish the book also focused a bit more on the basic differences in the commercial law framework in civil law and common law countries. For example, contract law and specific performance work very differently in both systems. Contract law is such a fundamental issue of transactional law that it is necessary to understand the basic differences between civil and common law countries in order to fully appreciate the complexity of international trademark transactions. It would have also been great, if the book could have tackled some of the more controversial policy issues arising out of double taxation avoidance agreements, especially the tax treatment of trademark royalties – does the present model give developed countries an unfair advantage?

Notwithstanding my wish list, the book is a very good buy for readers interested in trademark transactions. It will open your mind to the vast expanse of law that needs to be considered while advising on trademark transactions and will also acquaint you with the business side of such transactions.

Details of the Book: The Law and Practice of Trademark Transactions A Global and Local Outlook Eds. Irene Calboli and Jacques de Werra,
Published by Elgar Intellectual Property Law and Practice Series
Hardback price: £175.50
ISBN: 978 1 78347 212 3


Go to: Once the book is in your basket, enter CALB35 in the discount code box (after delivery details).

This post has been edited since it was first published.

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

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