Details
As the modern business world becomes increasingly decentralized and globally focused, traditional interpretations and applications of trademark protection law are facing greater and greater challenges. This is particularly true regarding the principle of trademark territoriality, which holds that trademark rights are bound by the laws of individual nations. This timely volume offers expert analyses of the challenges facing crucial aspects of trademark law from some of the most prominent scholars in the field.
The contributors explore how the rise of international trade and globalization has changed the way trademark law functions in a number of important areas, including protection of well-known marks, parallel imports, enforcement of trademark rights against counterfeiting, remedies, protection of certification marks, and domain names. A detailed discussion of the history of trademarks and territoriality along with a comprehensive breakdown of current issues make this a complete and well-rounded resource for the study of trademark law in a contemporary context.
Students, professors and practitioners working in international law, trade law and intellectual property law will find this book to be a valuable resource.
Foreword
Graeme Dinwoodie
PART I: INTRODUCTION
1. The Inevitability of ‘Territoriality Challenges’ in Trademark Law
Graeme W. Austin
PART II: TERRITORIAL NORMS AND (GLOBAL) WELL-KNOWN MARKS
2. Protection of Well-Known Marks: A Transnational Perspective
Marshall A. Leaffer
3. Interactivity, Territoriality, and Well-Known Marks
Leah Chan Grinvald
4. The Pan-American Trademark Convention of 1929: A Bold Vision of Extraterritorial Meets Current Realities
Christine Haight Farley
PART II: PROTECTING QUALITY AND IDENTITY IN THE GLOBAL ECONOMY
5. Marks and More(s): Certification in Global Value Chains
Margaret Chon
6. Branding the Land: Creating Global Meanings for Local Characteristics
Doris Estelle Long
7. Signs Beyond Borders: Moving from Commodity to Differentiated Exports in the Coffee Industry
Daphne Zografos Johnsson
PART III: TERRITORIALITY, EXHAUSTION OF RIGHTS, AND GRAY MARKET PRODUCTS
8. The (Avoidable) Effects of Territorially Different Approaches to Trademark and Copyright Exhaustion
Irene Calboli
9. Avoiding Mutant Trademarks: A Statutory Exclusion for Copyrighted Accessories to Parallel Imports
Mary LaFrance
10. ‘La Confusion des Genres’: Logos and Packaging as Copyrighted Works
Pierre-Emmanuel Moyse
PART IV: (NATIONAL) TRADEMARK ENFORCEMENT CHALLENGES
11. Territoriality (Mis)Understood: Enforcing Well-Known Foreign Marks in the United States
Lee Ann W. Lockridge
12. The Curious Case of Fake Beijing Olympics Merchandise
Peter K. Yu
13. Trademark Enforcement in Developing Countries: Counterfeiting as an Externality Imposed by Multinational Companies
Daniel C.K. Chow
PART V: TRADEMARK TERRITORIALITY AND THE REGULATION OF CYBERSPACE
14. Trademarks, Free Speech, and ICANN’s New GTLD Process
Jacqueline Lipton and Mary Wong
Index
Edited by Irene Calboli, Professor of Law and Director, Intellectual Property and Technology Program, Marquette University Law School, US and Visiting Professor, Faculty of Law, National University of Singapore and Edward Lee, Professor of Law and Director, Program in Intellectual Property Law, Illinois Institute of Technology, Chicago-Kent College of Law, US
‘There is an inherent tension between the push to harmonize international intellectual property norms and the need to remain flexible and adaptive in domestic policy-setting. In trademark law, global brands protection must be balanced against the interests of consumers, who, though they may be aware of the global realm, are ultimately local actors. This is the key issue explored in this well-crafted and timely book.’
– Daniel J. Gervais, Vanderbilt University Law School, US
‘Trademark law is territorial but trademarks, like trade, are increasingly global. Trademark owners often operate in worldwide markets where they are confronted with varying territorial legal rules about registration and even use of their trademarks. This apparent dichotomy between trade without borders and trademark laws with borders creates many challenging legal and practical issues which this volume tackles. This outstanding collection offers both specialists and novices insights into this complex topic. The editors are to be commended for their foresight in bringing this collection together.’
– Susy Frankel, University of Wellington, New Zealand
‘The growing globalization of trade increases the challenges faced by trademarks owners in the territories where they operate or plan to expand. Trademark owners thus have to find ways to solve the tension between global markets and territorial regimes of protection, which is precisely what this book explores from different angles and what makes it an essential work in today’s borderless and brand-based economy. The result is a remarkable collection of original and thought-provoking chapters, which masterfully discuss the challenges and opportunities that the global economy presents, and will continue to present, for the territorial acquisition and enforcement of trademark rights.’
– Jacques de Werra, University of Geneva, Switzerland
