We are delighted to announce the forthcoming online events for The CREATe Trade Mark Seminar Series, Autumn 2022: talks by Prof. Oren Bracha (University of Texas) on Wednesday 16 November, and Prof. Florent Thouvenin (University of Zurich) and Daniel Gerber (University of Basel) on Wednesday 30 November. Both talks are from 5.30pm to 6.30pm UK time. Full details, including abstracts and biographies, can be found below.
As previously announced, the CREATe Trade Mark Seminar Series comprises two on-line talks about trade mark law each term: one on trade mark history (convened by Dr Elena Cooper), and one on innovative methodologies in contemporary trade mark research (convened by Dr Xiaoren Wang). The Series was launched in Spring 2022, with talks from Dr Jennifer Davis (University of Cambridge) on nineteenth century trade mark history, and an interdisciplinary team from NYU – Prof. Barton Beebe, Dr Roy Germano, Prof. Christopher Jon Sprigman and Prof. Joel H. Steckel – on experimental methods.
Zoom links for the seminars will be emailed a few days before the events to all on The CREATe Trade Mark Seminar Series mailing list. There is no need to RSVP. To join the mailing list, please contact Elena Cooper: email@example.com
THE SEMINAR ON 30 NOVEMBER 2022 HAS SINCE BEEN CANCELLED.
SEMINAR 1: TRADE MARK HISTORY
Time and place: Wednesday 16 November 2022, 5.30pm-6.30pm, UK time, online.
Speaker: Prof. Oren Bracha, University of Texas.
Chair: Dr. Elena Cooper, Senior Research Fellow, CREATe.
Title: Brand Property From Below.
Abstract: In the decades bracketing the turn of the twentieth century a new legal theory of trademarks had developed: brand property. Brand property competed with the traditional understanding of trademark law as a fraud-based legal field designed to protect the product-origin communicative function of marks. The focus of brand property was thoroughly different. At its heart stood the general power to exclude others from using and enjoying the economic value of brands as valuable semiotic assets of the firm. This duality still underlies modern trademark law and its fundamental inner struggles. The chapter argues that the concept of brand property arose out of the everyday practices of lawyers. Parallel or even prior to the development of articulated theories of brand property and the legal doctrines in which they were embedded, there were lawyers registering, policing, and assigning trademark rights. It is within these practices that a consciousness, or a raw experience, of brand property arose. Specifically, two elements appeared in these practices that were essential for the concept of brand property. First, an object of property, eventually known as the brand, was created by reifying what previously was seen as dynamic communicative relations. Second, the brand came to be experienced as a firm asset of substantial market value that had to be protected and policed. Brand consciousness eventually gave rise to and grounded a more articulated legal theory and ideology of brand property. The chapter reconstructs this process by exploring the trademark practices of the Amoskeag Manufacturing Company and its legal counsel in the early twentieth century. The account demonstrates how property rights arise “from below,” not through social norms, but through social practice and consciousness that endow abstract property concepts with determinacy.
Biography: Oren Bracha is the William C. Conner Chair in Law at the University of Texas School of Law. He is a legal historian and an intellectual property scholar. His fields of interest include intellectual property, legal history, law and technology, and private law theory. Bracha’s work focuses on intellectual property law, including both the history of the field and its contemporary institutional design, theory, and policy. His book, Owning Ideas: The Intellectual Origins of American Intellectual Property, 1790-1909, explores the history of the emergence of intellectual property in the United States during the long nineteenth century. It has been hailed as “a superb study of the transformation of American copyright and patent doctrine in the nineteenth century…. deeply researched, finely nuanced, and lucidly presented.”
SEMINAR 2: INNOVATIVE METHODOLOGIES IN CONTEMPORARY TRADE MARK RESEARCH
Time and place: THE SEMINAR ON 30 NOVEMBER 2022 HAS SINCE BEEN CANCELLED.
Speakers: Prof. Florent Thouvenin, University of Zurich, and Daniel Gerber, University of Basel.
Chair: Dr Xiaoren Wang, Lecturer in Law, University of Dundee (and Associate, CREATe).
Title: Trademark Opposition Proceedings in Switzerland: An Empirical Study of Legal Reasoning.
Abstract: In this talk, we will present the first empirical analysis of legal reasoning in trademark opposition proceedings in Switzerland. We examine a novel dataset on trademark opposition proceedings brought before the Swiss Federal Institute of Intellectual Property (IPI). Our dataset contains information on 2,453 cases relating to proceedings between June 2002 and August 2018. In particular, we examine which substantive factors drive the outcome of these decisions. Some of our findings call into question the established legal doctrine. For example, our data suggest that the importance of the beginning of words for establishing similarity between word marks is overrated by legal doctrine. Furthermore, our data show no clear influence of the level of attention on the assessment of the likelihood of confusion. Instead, we found striking differences between the success rates of different types of trademarks. In fact, the data reveal a sliding scale with word marks being the most successful trademarks followed by figurative trademarks that contain a word element, and purely figurative trademarks. Based on our empirical findings, we make suggestions on how to improve the legal reasoning when assessing the likelihood of confusion.
Biographies: Florent Thouvenin is full professor of information and communications law at the University of Zurich. Among other things, he is chair of the steering committee of the Center for Information Technology, Society, and Law (ITSL) and director of the Digital Society Initiative (DSI) at the University of Zurich. He is also one of the editors of the leading commentary on Swiss trademark law. In his research, he deals with legal issues surrounding digitalisation, with a focus on copyright and data protection law. A particular focus is currently on the regulation of Artificial Intelligence (AI) and the use of data in research.
Daniel Gerber is currently a PhD candidate in Biostatistics at the Swiss TPH of the University of Basel. In his law-related previous work at University of Zurich, he worked on modelling decision behaviour of different courts and institutions. A particular focus was the information extraction from decisions with various text mining methods.