This episode delves into the principle of trademark exhaustion and its impact on the free movement of goods, a cornerstone of both EU trademark law and global trade policies. Trademark exhaustion, also known as the "first sale doctrine," limits the rights of trademark holders over goods once they have been lawfully placed on the market. The episode explores how this principle enables the redistribution of branded products, fostering competitive markets while balancing the intellectual property rights of trademark holders.

In the European Union, the principle of regional exhaustion allows trademarked goods lawfully sold within the European Economic Area (EEA) to circulate freely across EU member states without further trademark restrictions. This principle is critical for upholding the EU's fundamental objective of free movement of goods within the single market. Cases such as Silhouette International v. Hartlauer have underscored the EU's regional approach, which prevents trademark holders from blocking resale within the EEA but allows them to control distribution outside this zone.

Contrastingly, international exhaustion allows goods sold anywhere in the world to move freely across borders, unrestricted by trademark rights. Countries like the US and Japan often follow this model, whereas the EU remains committed to its regional approach. The episode discusses the benefits and potential drawbacks of both models, examining how regional versus international exhaustion influences parallel imports, pricing, and brand integrity.

Through a look at landmark cases and statutory frameworks, this episode highlights the ongoing debate on balancing trademark holder rights with market access and consumer choice, providing a nuanced understanding of trademark exhaustion's role in global and regional trade dynamics.

This episode provides an in-depth look at the legal framework governing trademark transactions under Common Law systems, such as those in the UK and the US, as well as in the European Union. We explore how trademarks, as valuable assets, are frequently subject to transactions like licensing, assignment, franchising, and securitization, which require distinct legal approaches and protections to maintain brand integrity and commercial value.

In Common Law jurisdictions, trademark transactions are primarily governed by case law and statutes. Key concepts include the principles of goodwill, non-assignment in gross (assigning a trademark without transferring the associated goodwill), and the treatment of licenses, which vary in exclusivity and scope depending on the agreement. We discuss how trademark assignments and licensing must respect these fundamental principles to be legally enforceable, especially as seen in cases where assignments impact consumer perceptions of quality and source.

In the EU, trademark transactions are regulated by the EU Trade Mark Regulation (EUTMR) and associated directives, creating a harmonized approach across member states. The episode addresses how EU law facilitates trademark transfers while enforcing strict rules around quality control, continuity of brand perception, and trademark use to prevent “naked licensing,” where a mark’s distinctiveness could be jeopardized. Additionally, we look at the procedural requirements for recording trademark transactions at the EU Intellectual Property Office (EUIPO) to ensure that trademarks retain their enforceable status across all EU jurisdictions.

Finally, we consider how these different frameworks affect international trademark transactions, particularly in light of recent regulatory changes and trade agreements that impact cross-border IP transactions. This comparative analysis provides essential insights for navigating trademark deals within and across Common Law and EU systems.

In this episode, we examine the legal frameworks protecting Geographical Indications (GIs) of origin, focusing on how various jurisdictions safeguard products with unique qualities linked to specific locations. Geographical Indications serve as valuable intellectual property rights, often associated with agricultural products, wines, and spirits that derive their quality, reputation, or characteristics from their place of origin. We explore the primary mechanisms in place under the World Trade Organization’s TRIPS Agreement, which mandates GI protections, and how different regions implement these requirements.

In the European Union, robust legislation such as the PDO (Protected Designation of Origin) and PGI (Protected Geographical Indication) schemes offer extensive protection. These frameworks ensure that only products genuinely originating in a specific area can use a registered GI, preserving authenticity and preventing market dilution. Comparatively, we look at the US’s more trademark-based approach, which relies on certification marks to protect regional brands and names, and the implications of these differences for international trade. Additionally, the episode covers dispute resolution mechanisms and the ongoing global debates over GI protection, emphasizing their significance for producers and consumers alike.

In this episode, we explore the legal frameworks governing domain name disputes involving trademarks in North America, mainland China, and Hong Kong, focusing on the intersection of domain name registration and trademark rights. With the rise of e-commerce and digital branding, domain names have become critical intellectual property assets, but they also pose unique challenges in cases of “cybersquatting” or unauthorized use. We analyze how the United States addresses these issues through the Anticybersquatting Consumer Protection Act (ACPA) and the Uniform Domain-Name Dispute-Resolution Policy (UDRP), providing trademark owners with options for recourse against infringing domain names.

In contrast, mainland China enforces its domain name disputes under the China Internet Network Information Center (CNNIC) rules, which align with broader intellectual property laws but emphasize administrative arbitration. Meanwhile, Hong Kong follows UDRP principles but applies distinct local protocols in disputes involving .hk domains. Through comparative analysis, this episode examines key cases, regulatory differences, and strategies trademark owners can use to navigate domain disputes in these varied jurisdictions, offering a practical guide to protecting digital brand identity in today’s global market.

In this episode, we delve into the distinctions and similarities between EU and US laws regarding trademark infringement, drawing from The Cambridge Handbook of International and Comparative Trademark Law. We examine the core elements required to establish infringement in both jurisdictions, including the likelihood of confusion, dilution, and unfair advantage. While both the EU and US aim to protect trademark owners and prevent consumer deception, they employ different approaches: the US places a greater emphasis on the “likelihood of confusion” test, whereas the EU also integrates “dilution” and “unfair advantage” as broader protections against free-riding on brand reputation. Through case studies and statutory comparisons, we outline the varying standards for proving infringement, exploring how these differences influence the enforcement of trademark rights across borders. This episode provides a comprehensive understanding of how trademark infringement is approached on both sides of the Atlantic, with practical implications for global brand protection strategies.

This episode examines public policy limitations on trademark protection, comparing approaches across various jurisdictions as outlined in The Cambridge Handbook of International and Comparative Trademark Law. Public policy serves as a boundary to trademark rights, ensuring trademarks do not violate moral standards, public order, or fundamental rights. We explore specific limitations such as restrictions on scandalous or offensive marks, regulatory exclusions, and the use of trademarks for harmful products like tobacco or alcohol. Through comparative analysis of cases from the US, EU, and other countries, we discuss how courts and legislatures balance public interest with brand protection, including the impact on freedom of expression and consumer protection. This discussion provides insights into the evolving role of trademarks within public policy and the nuances in legal frameworks internationally.

This episode dives into the doctrine of secondary trademark liability in both the United States and European Union, based on insights from The Cambridge Handbook of International and Comparative Trademark Law. Secondary liability holds third parties accountable for facilitating or contributing to trademark infringement, even if they are not the primary infringers. We unpack two key forms of secondary liability—contributory and vicarious liability—examining how they apply to platforms, distributors, and service providers. Through landmark cases like Tiffany (NJ) Inc. v. eBay Inc. in the US and the L’Oréal v. eBay decision in the EU, we explore how courts assess knowledge, control, and the role of intermediaries. This episode highlights the differing thresholds and legal tests for establishing secondary liability across jurisdictions, emphasizing the impact on online marketplaces and the obligations for trademark protection in a digital age.

In this episode, we explore the intricate relationship between trademark and copyright law as presented in The Cambridge Handbook of International and Comparative Trademark Law. We examine how both regimes can apply simultaneously to certain works—such as logos, characters, packaging designs, and creative branding materials—providing layers of protection for intellectual property. While trademark law focuses on brand identity and consumer perception, copyright law protects the creative expression of ideas. We discuss practical examples and prominent cases where both rights converge, such as brand mascots or iconic logos, and examine how courts navigate conflicts when copyright-protected content is repurposed in ways that might infringe on trademark. This episode sheds light on the strategic use of overlapping rights, emphasizing the strengths and challenges of dual protection in international markets.

In this episode, we explore the complex interplay between intellectual property law and the right of publicity, as examined in The Cambridge Handbook of International and Comparative Trademark Law. The right of publicity allows individuals to control the commercial use of their identity, including names, likenesses, and distinctive attributes. We discuss how this right intersects with trademark and copyright law, particularly when protecting personal brand and celebrity endorsements. The episode compares approaches in jurisdictions like the United States, where the right of publicity is more pronounced, with those in the European Union, where privacy and data protection laws also influence publicity rights. Through prominent cases and legislative examples, we examine the boundaries of protecting personal identity in the context of advertising, entertainment, and commercial products.

In this episode, we delve into the intricate relationship between trademark law and advertising law within EU and Common Law frameworks, drawing insights from The Cambridge Handbook of International and Comparative Trademark Law. This episode unpacks how trademarks are protected in advertising contexts, focusing on issues such as comparative advertising, keyword advertising, and the unauthorized use of trademarks in marketing. We explore key cases and legislation that outline the permissible use of trademarks in promoting goods and services, examining how courts balance brand protection with fair competition and consumer information rights. The episode highlights how EU regulations, such as the Misleading and Comparative Advertising Directive, and Common Law principles shape the boundaries of lawful advertising practices, providing a comparative perspective on the overlap between trademark rights and advertising standards.