Arbitrating Brands


Arbitrating Brands

International Investment Treaties and Trade Marks

9781788971805 Edward Elgar Publishing
Metka Potočnik, Lecturer in Law, Wolverhampton Law School, University of Wolverhampton, UK
Publication Date: 2019 ISBN: 978 1 78897 180 5 Extent: 320 pp
In light of the controversy of the Philip Morris cases against Australia and Uruguay, this book systematically explores trade marks and brands as foreign direct investment, and in particular their substantive protection under international investment treaties. With the use of various hypothetical examples of devaluation of investments made in brands, the book explores the specifics of arbitrating investment claims arising out of state trade mark regulation. This work aims to establish useful tools in bridging the terminological and analytical gaps between experts in intellectual property law and international investment law.

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Critical Acclaim
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Brand recognition is crucial to companies promoting the sale of products and services. Directors invest considerable revenue into developing brand imagery that is unique and identifiable. Linking intellectual property law and international investment law, Arbitrating Brands takes the opportunity to analyse trade marks and brands as examples of foreign direct investment.

In light of the Phillip Morris cases against Australia and Uruguay, Metka Potočnik explores the substantive protection of trade marks under international investment treaties, unpacking the specifics of arbitrating investment claims arising out of state trade mark regulation. Utilising plain packaging regulation for tobacco products as a springboard for analysis, this book offers a practical approach with recommendations for arbitrators on how to approach trade mark investment cases.

Detailed and insightful, this book is essential reading for arbitration practitioners, offering practical analytical tools to approaching the adjudication of trade mark investment disputes. It will also be of interest to the growing group of researchers and students focusing on intellectual property arbitration. Furthermore, brand owners following developments in the field will benefit from this book’s insight into the trajectories of trade mark legislation.
Critical Acclaim
‘Arbitrating Brands offers a fantastic introduction to these merging legal issues and is useful for not only practitioners but those in academia seeking greater knowledge on this developing area of the law.’
– Kay Dunn, Wolverhampton Law Journal

‘Arbitrating Brands is an inevitable purchase for the bookshelf of every investment, IP and international lawyer, especially for those with interest or involvement in IP investment arbitration. The book’s strength is in its choice of subject-matter and its courage in dealing with the uncharted territory of the subject’s relevance to investment law and the resolution of related disputes. The quality of the discussion is increased by a detailed analysis of basic legal issues and standards in investment law, such as the applicable law and the establishment of jurisdiction – all in light of the prospective trademark protection disputes...the book is recommended for every arbitration and IP practitioner, but also for academics who might use it as a basis for pursuing their research in the field or complementing it with work on future legal developments in investment arbitration.’
– Patricia Zivkovic, ICSID Review

‘This book helps to bridge the communication gap between IP lawyers and international investment lawyers. It provides a roadmap to the many IP issues that can arise under international investment laws and proposes ways of ensuring effective, informed and fair decision-making in a field that is becoming increasingly important (and contentious).’
– David Llewelyn, Singapore Management University, Singapore


1. Background, Scope and Terms of Reference
2. Interference Between IP Law and International Investment Law: settled and remaining issues
3. Dialogue of Two Bodies of Law: Toolbox of Translators
4. Chapter Structure

Chapter 1: Trade mark investment disputes: case studies
1. Origins of TM investment disputes
2. Case Study 1: Tobacco trade marks
3. Case Study 2: Unhealthy food and beverages trade marks
4. Case Study 3: Infant formula trade marks
5. Case Study 4: Disparaging, immoral and scandalous trade marks
6. Conclusion

Chapter 2: Special approach: a justification
1. IP as lex specialis and Consequent Special Approach
2. Justification of Property in Trade Marks
3. Legislative History on Trade Marks and Brands
4. Justification for a Special Approach
5. Conclusion

Chapter 3: Jurisdiction and applicable law in trade mark investment disputes
1. Introduction
2. Jurisdiction
3. Applicable law in Investment Treaty Arbitration
4. Conclusion

Chapter 4: Defining trade marks and brands as investment assets: delegation to trade mark law
1. Introduction and Structure

Part A: Attributes of property in trade marks and brands
2. Object of protection
3. Attribute One: Control manifested in the exclusive rights conferred in registered trade marks
4. Attribute One-Plus: extended control conferred by well-known trade marks
5. Attribute Two: Use of Trade Marks
6. Attribute Three: Transferability of Trade Marks
7. Attributes of Property in Brand Value: Protecting Goodwill through Unfair Competition Laws

Part B: Restrictions to Property in Trade Marks and Brands
8. Internal Limitations to Property in Trade Marks
9. External Limitations to Property in Trade Marks
10. Conclusion

Chapter 5: Attributes of property in investment assets: origins in investment law
1. Introduction and Structure

Part A: Substantive protection of Investment Assets
2. Indirect Expropriation
3. Fair and Equitable Treatment Standard

Part B: State’s Right to Regulate Investor’s Interests in Property
4. Limitations to the Standard of Indirect Expropriation
5. Limitations to the FET Standard
6. Conclusion

Chapter 6: State liability for regulating trade marks and brands: the dialogue of two bodies of law
1. Introduction and Structure

Part A: Investment Treaty Violation caused by Interference with Trade Marks and Brands
2. Expropriation of Trade Marks and Goodwill: a Two-Step Test
3. Fair and Equitable Treatment of Trade Marks and Goodwill

Part B: State’s Freedom to Regulate the Use of Trade Marks for Reasons of Public Interest
4. TRIPs as the Guardian of Public Interest is left to the Discretion of Arbitral Tribunals
5. Investment Treaty Considerations of Public Purpose are Limited in Scope
6. Fundamental Rights: Possible, yet Ineffective Limitations to Investor’s Rights
7. Conclusion

Chapter 7: Controlling the power of brands: in search of a balanced approach via the international rule of law
1. Introduction: A demand for a special adjudication approach in TM investment disputes
2. Adjudication in accordance with international law and its rule of law (RoL) standards
3. Implications of RoL Adjudication
4. Conclusion

Chapter 8: Remedies in trade mark investment arbitration
1. Introduction
2. Trade mark remedies: practice from trade mark laws
3. The remedy of specific performance unlikely available in ITA
4. Monetary Compensation: the traditional remedy in ITA
5. Market Value of Trade Marks and Goodwill: the challenge of valuation
6. Moral Damages: Harm to Investor’s Reputation
7. Reducing Full Compensation: available principles
8. Conclusion




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