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Trade Mark Litigation

Trade Mark Litigation
Jurisdictional Comparisons
2nd Edition
Series:  The European Lawyer Ref Series
ISBN:  9780414027398
Published by:  Sweet & Maxwell
Publication Date:  13 Sep 2013
Subscription Information:  Non-Subscribable Product
Format:  Hardback
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Due to the success of the first edition, published in 2008, Thierry Calame of Lenz & Staehelin and Massimo Sterpi of Jacobacci & Associati have agreed to lead the second edition of Trade Mark Litigation - jurisdictional comparisons.

This title:

  • Explains the latest legislation and precedents involving trade mark litigation in over 30 jurisdictions
  • Adopts a country-by-country approach, with content provided by expert practitioners from each of the jurisdictions, following a common format to allow straightforward comparisons
  • Takes into account the enormous expansion of digital commerce and the growing roles of trade mark registration in fighting abuses on the internet
  • Answers such questions as ‘can I oppose or cancel this trade mark?’ in a particular country, and the basis for taking such action – like national or supranational rights, and the procedures for doing so
  • Sets out each country’s courts and administrative system
  • Looks at the available enforcement options
  • Goes through civil court procedure
  • Indentifies the available remedies
  • Covers trade mark enforcement against metatag
  • Examines unjustified threats of trade mark infringement
  • Looks at conflicts between trade mark and domain name

“As we experience in our practice, there is an increasing demand for advice regarding trademarks issues, also taking into account the enormous expansion of digital commerce and the growing roles of trademark registration in fighting abuses on the Internet. The new book will focus on and contain the most up-to-date legislation and precedent concerning all these developments.”

From the General Editors’ letter

“The essentials are presented in a easy to read, thoughtful, clear and concise manner. Starting with the basic questions which we all face, like ‘can I oppose or cancel this trade mark’ in a particular country, the basis for taking such action – like national or supranational rights and the procedures for doing so, are here at your fingertips”.

From Preface to 1st Edition by Scott E. Thompson, former Vice-President, Global Trademarks, GlaxoSmithKleine


• Sources of Law
• Court and Administrative System
• Substantive Law
• Parties to Litigation
• Enforcement Options
• Procedure In Civil Courts
• Final Remedies
• Preliminary Relief


Preface  Massimo Sterpi  Studio Legale Jacobacci & Associati & Thierry Calame  Lenz & Staehelin
Australia  Michael Williams, Lisa Lennon, Claire Bothwell & Anna Smyth Gilbert + Tobin
Austria  Dr Sascha Salomonowitz, Dr Michael Horak & Dr Guido Donath 
   Salomonowitz Horak Attorneys-at-Law
Bahrain  Khawaja Subaktageen Zahoor  United Trademark & Patent Services
Brazil  Gustavo Leonardos & Ricardo Dutra Nunes  Luiz Leonardos & Cia 
China  Lian Yunze & Liu Yuping  Hylands Law Firm 
Ecuador  Sasha Mandakovic Falconi  Falconi Puig Abogados 
Finland  Rainer Hilli, Mikael Segercrantz & Johanna Lilja   Roschier, Attorneys Ltd
France  Eléonore Gaspar  Duclos, Thorne, Mollet-Viéville & Associés
Germany  Wolfgang Kellenter, Andrea Schlaffge & Astrid Harmsen  Hengeler Mueller
Greece  Alkisti-Irene Malamis  Malamis & Associates
Hong Kong  Steven Birt & Andrew Chan  Reed Smith Richards Butler 
Israel  Tal Band & Avi Ordo  S Horowitz & Co 
Italy  Massimo Sterpi & Nicoletta Galizia  Studio Legale Jacobacci & Associati
Japan  Yutaka Miyoshi  Mori Hamada & Matsumoto 
Lebanon  Tima Hachem, Bahia Alyafi & Mike Badran  Grant Thornton Alyafi IP Group
Malaysia  Karen Abraham, Indran Shanmuganathan & Teng Wei Ren Shearn   Delamore & Co 
Malta  Dr Luigi A Sansone  Salomone, Sansone & Co
Oman  Sarmad Hasan Manto  United Trade Mark & Patent Services
Pakistan  Hasan Irfan Khan  United Trade Mark & Patent Services
Qatar  Raka Roy  United Trademark & Patent Services
Saudi Arabia  Tima Hachem, Bahia Alyafi & Mike Badran  Grant Thornton Alyafi IP Group
Singapore  Regina Quek, Anthony Soh & Shawn Poon  One Legal LLC 
South Africa  Victor Williams  Hahn & Hahn Inc 
Spain  Jorge Llevat, Cristina Vendrell & Carolina Segade  Cuatrecasas
Sweden  Mattias Karlsson & Martin Tranälv  Awapatent AB
Switzerland  Thierry Calame & Jürg Simon  Lenz & Staehelin 
Turkey  Dr Murat Volkan Dulger & Bilge Saltan  Dülger Law Firm 
UAE  Maria Farrukh Khan & Farzana Hirani  United Trademark & Patent Services
UK  Susie Middlemiss  Slaughter and May   
USA  Richard S. Mandel & Joel Karni Schmidt  Cowan, Liebowitz & Latman, P.C.



Thierry Calame of Lenz & Staehlin

Dr. Thierry Calame is an expert in intellectual property matters, with a particular emphasis in patent law. He has vast experience as counsel in patent, trademark, unfair competition and copyright litigation as well as IP and technology related arbitration, notably under ICC Rules and Swiss Rules. In addition, Thierry Calame advises on licensing, the intellectual property aspects of a wide range of other transactions as well as pharmaceutical law, including regulatory and advertising issues. He holds both a masters degree in chemistry and law. Thierry Calame is permanent lecturer at the University of St.Gallen and has published on a wide range of intellectual property topics. He is the Reporter General of the International Association for the Protection of Intellectual Property (AIPPI).

Massimo Sterpi of Jacobacci & Associati

Massimo Sterpi of Jacobacci & Associati, born 1966, is a senior partner of the law firm Jacobacci & Associati, one of the leading firms in the field of Intellectual property in Italy, and manages its Rome office. 

He has been recently awarded the prize as “Best Italian IP Lawyer of 2011” by Top Legal Magazine. 

A passionate contemporary art collector, he developed an internationally recognised practice in art law, both in transaction and litigation, and is considered one of the best experts in this field at international level.
His clients involve major museums and art institutions, important living artists, artists’ estates and foundations, art critics and historians, and leading international collectors and art galleries. He is often consulted by the Government and Public Institutions on a variety of art law issues, wrote many articles on the subject, and spoke to over 100 conferences on art law worldwide.  

He is the immediate past Chair of the Art, Cultural Institutions and Heritage Law Committee of the International Bar Association, member of the Legal Affairs Committee of ICOM (International Council of Museums), Mediator on Art and Cultural Heritage for WIPO/ICOM and member of the Advisory Board of the Peggy Guggenheim Collection in Venice.

He is the co-editor of the intentional reference book “Copyright Litigation” published by The European Lawyer, covering over 30 jurisdictions.


Lenz & Staehelin

Switzerland’s largest law firm, stands for half a century of experience in business law. Solidly ingrained in the Swiss business community, the firm counts among its clients many of the world’s most successful and reputable companies, organisations and institutions, as well as individuals with interests in Switzerland.

Jacobacci & Associati

The firm is very active in the field of copyright and art law, assisting artists, museums and cultural institutions, collectors, critics, publishers and other stakeholders (including those involved in insurance, transport, and event organizers).

The assistance provided includes, for example, the drafting of contracts of all kinds with regard to exhibitions or publications, sponsorship agreements, sale of works agreements between artists and galleries or collectors, the creation of foundations, associations or committees, the resolution of issues regarding authenticity, the management of artist or collector heritage, donation of works to cultural institutions, import or export of artworks, the analysis of potential plagiarism or unauthorized reproductions, identification of the holder of rights which are to be acquired, as well as the management of all other disputes relating to the subject matter.




Interested in contributing?
If you are interested in contributing to one of our cross-jurisdictional titles please contact Emily Kyriacou - emily.kyriacou@thomsonreuters.com - specifying your law firm, country and practice area specialisation.
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