"Remedies in trade mark investment arbitration" [2019] ELECD 1832; in Potocnik, Metka (ed), "Arbitrating Brands" (Edward Elgar Publishing, 2019) 229

Book Title: Arbitrating Brands

Editor(s): Potočnik, Metka

Publisher: Edward Elgar Publishing

Section: Chapter 8

Section Title: Remedies in trade mark investment arbitration

Number of pages: 24

Abstract/Description:

Chapter 8 explores the remedies available to trade mark proprietors, in the event that their claims under investment treaties have been successful on the merits (with links to ILC Draft Articles). Importantly, this overview and investigation is not done in isolation and solely through the prism of investment law. This chapter highlights some principles for remedies available and known to practitioners in traditional intellectual property litigation. Here, the most common remedy is an injunction, which orders the defendant to change its behaviour in the market (specific performance). Differently, the remedy of specific performance in investment arbitration is unlikely to succeed. Instead, the most commonly awarded remedy for expropriation of FET violation is a monetary compensation. Here the book offers some considerations for arbitrators when evaluating the fair market value of trade marks or brands. This chapter also offers some observations on moral damages as compensable in investment treaty arbitration.