In general, trademarks are typically transferred by assignment
during the acquisition of a business or business division, and when
a business attempts to gain greater, more senior rights in a
certain mark to gain an advantage over a competitor. Both scenarios
can foster an invalid transfer of a trademark regardless of the
intentions of the parties involved.
In the business acquisition, the buyer of a business reasonably
expects to receive the trademarks that represent the acquired
business and serve as the repository of goodwill for the business.
If the trademark is one that is recognized by the customers of the
acquired business, or any portion of the public, then it is an
asset with substantial value, albeit one that is difficult to
Similarly, the seller of a business should reasonably expect to
part with the attendant trademarks that promote and identify the
business, and may expect to receive a premium for them if the
trademarks are particularly well known within a definable market.
Properly executed, a trademark assignment allows the assignee to
step into the shoes of the assignor, gaining whatever goodwill the
assignor has built up, and whatever priority the assignor has in
the mark against others.
The second situation, the priority contest, usually results from
a declared or impending trademark infringement dispute, where two
or more businesses using the same trademark are competing for the
sole ownership rights to the mark. Because trademark rights in
Turkey are determined by priority in time, an enterprising company
will often attempt to acquire an assignment of an older, identical
trademark in order to establish a pattern of use that predates that
of its competitors. Sometimes the buyer in this situation will
intend to use the purchased trademark as a part of its business.
Typically, the purchaser in this scenario intends to buy a form of
priority as an asset.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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