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Trademark Protection and Territoriality Challenges in a Global Economy

Edited by Irene Calboli, Professor of Law, Texas A&M University School of Law, US; Visiting Professor and Deputy Director, Applied Research Centre for Intellectual Assets and the Law in Asia, Singapore Management University School of Law and Edward Lee, Professor of Law and Director, Program in Intellectual Property Law, Illinois Institute of Technology, Chicago-Kent College of Law, US
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.
Extent: 360 pp
Hardback Price: $145.00 Web: $130.50
Publication Date: 2014
ISBN: 978 1 78195 390 7
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  • Law - Academic
  • Intellectual Property Law
  • International Economic Law, Trade Law
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.
‘This lively and scholarly edited collection is published as part of Edward Elgar's Intellectual Property and Global Development Series. . .The editors are to be congratulated on their thoughtful choice and grouping of contributions to this timely volume. The writing is of a consistently high standard, is well referenced and likely to prompt further research. The book is handsomely produced as one expects of Edward Elgar publications. A table of cases and legislative instruments would have been useful: some but by no means all of these are, however, listed in the general index . The book deserves a wide readership among trade mark lawyers and a place on international intellectual property law syllabi.’
– Professor Norma Dawson, European Intellectual Property Review

‘This book is essential reading for attorneys who represent clients involved in disputes involving foreign trademarks, geographic designations for products, or gray market goods, or whose trademark practice includes the acquisition and enforcement of trademark rights in foreign lands. It also serves as a valuable and illuminating resource for scholars, legislators, judges, trademark office regulators, and anyone else considering whether the territorial model of trademark law is an "anachronism " in today's global marketplace. . . . This informative book should be part of the legal toolkit of any practicing trademark attorney, and will likely influence future trademark policy and scholarship. The chapters provide an excellent overview of various legal issues that are critical to the global practice of trademark law today. The authors' original legal analysis and practical solutions to the problems set forth in the chapters are an important contribution to the complex and challenging field of international, comparative, and transnational trademark law.’
– Lisa P. Ramsey, The IP Law Book Review

‘The legal and practical challenges created by the apparent tension between the operation of trade mark laws and the borderless nature of a brand-based economy is explored throughout this book. . . . it has contributions from writers across the globe, providing a more balanced overview of the way this issue impacts different countries.’
– Sharon Givoni, Sharon Givoni Consulting

‘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 Victoria, University of Wellington, New Zealand

‘The growing globalization of trade increases the challenges faced by trademark 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

‘In the eighth and latest volume of the Elgar Intellectual Property and Global Development Series, Irene Calboli and Edward Lee have gathered distinguished experts in the areas of trademarks, Internet domain names, and traditional knowledge for a discussion of a variety of issues that continuingly intensi?ed globalization presents for trademark law. The volume, entitled Trademark Protection and Territoriality Challenges in a Global Economy, is a welcome contribution to the Series, edited by Peter Yu, which is designed ‘to undertake a critical inquiry of issues lying at the intersection of intellectual property and global development.’’
– International Review of Intellectual Property and Competition Law



Contributors: G.W. Austin, I. Calboli, L. Chan Grinvald, M. Chon, D.C.K. Chow, G.B. Dinwoodie, C.H. Farley, L.C. Grinvald, M. LaFrance, M.A. Leaffer, E. Lee, J. Lipton, L.A.W. Lockridge, D.E. Long, P.-E. Moyse, M. Wong, P.K. Yu, D. Zografos Johnsson
Contents:

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