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The challenges and costs of litigating (multi-territorial) trademark (similarly to other intellectual property) disputes before national courts are well-known.1 This explains the growing importance of alternative dispute resolution (ADR) mechanisms, specifically arbitration, for solving trademark2 (and other intellectual property) disputes.3 In an international dispute, ADR can particularly offer the advantage to centralize the dispute resolution process and thus avoid the fragmentation before parallel regional or national courts.4 The increasing reliance on and trust in ADR systems for solving trademark (and other IP) disputes is not surprising: it mirrors the growing importance of ADR in the general dispute resolution ecosystem.
This chapter addresses a special category of cases in which an asserted patent is, or has been declared to be, essential to the implementation of a collaboratively developed voluntary consensus standard, and the holder of that patent has agreed to license it to implementers of the standard on terms that are fair, reasonable, and nondiscriminatory (FRAND).This chapter explores how the existence of such a FRAND commitment may affect a patent holder’s entitlement to monetary damages and injunctive relief. In addition to issues of patent law, remedies law, and contracts law, we consider the effect of competition law on this issue.
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