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The CREATe Trade Mark Seminar Series, Summer 2023: Online Talks by Prof. Florent Thouvenin and Daniel Gerber on Empirical Methods and by Dr Elena Cooper and Prof. David Higgins on Trade Mark History

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The CREATe Trade Mark Seminar Series, Summer 2023: Online Talks by Prof. Florent Thouvenin and Daniel Gerber on Empirical Methods and by Dr Elena Cooper and Prof. David Higgins on Trade Mark History

By 10 May 2023November 17th, 2023No Comments

We are delighted to announce the online events for The CREATe Trade Mark Seminar Series, Summer 2023 on empirical methods and trade mark history. 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, and one on innovative methodologies in trade mark research. The Series was launched in Spring 2022, with talks from Dr Jennifer Davis (University of Cambridge) on nineteenth century trade mark history, an interdisciplinary team from NYU –  Prof. Barton Beebe, Dr Roy Germano, Prof. Christopher Jon Sprigman and Prof. Joel H. Steckel – on experimental methods. It has since also included trade mark history presentations from Prof. Oren Bracha (University of Texas), as well as Jose Bellido (University of Kent) and Prof. Kathy Bowrey (University of New South Wales).

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:


Time and place: Wednesday 10 May 2023, 5.30pm to 6.30pm, UK time, online.

Speakers: Prof. Florent Thouvenin, University of Zurich, and Daniel Gerber, University of Basel.

Chair: Dr Xiaoren Wang, Lecturer in Law, University of Dundee and CREATe Fellow.

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.


Time and place: Wednesday 24 May 2023, 5.30pm-6.30pm, UK time, online.

Speakers: Dr Elena Cooper, CREATe and Prof. David Higgins, University of Newcastle.

Commentator: Prof. Alison Firth, University of Surrey.

Chair: Dr Xiaoren Wang, Lecturer in Law, University of Dundee and CREATe Fellow.

Title: Crime, Trade Marks, and ‘Soft’ Trade Policy in the Inter-war Era: Market Realities and the Merchandise Marks Act 1926

Abstract: In this paper we explore a specific facet of the relationship between trade marks and the criminal law in the UK in the twentieth century. Fusing insights from legal, business and economic history, we show how, in the inter-war years of the twentieth century, the context of domestic politics and wider international trade policy, resulted in a greater focus on the relationship between trade marks and market-place understandings of the national manufacturing origin of products. This context resulted, amongst other things, in the passage of the Merchandise Marks Act 1926: a criminal law measure that stipulated the circumstances in which imported goods were to be marked with an indication of origin of the place of manufacture/production (either a definite indication of the country of origin, or ‘Empire’ or ‘Foreign’) and included, in section 1, a criminal offence regulating the use of inter alia a trade mark ‘being or purporting to be’ the trade mark of a UK trader. We show that, during the interwar period, the criminal law regulating trade marks became entwined with ‘soft’ trade policy, i.e. a means of protecting the domestic/Empire market falling short of ‘hard’ trade policy (protection/tariffs). The proper role of the criminal law regulating trade marks in international trade policy polarised political debate in the legislature, and also involved major commercial and manufacturing organisations, such as the Federation of British Industry, and various chambers of commerce. Using new archival sources, we show how the meaning of the 1926 Act was actualised through the enforcement of the 1926 Act by the Board of Trade. We explore the problems that confronted the Board of Trade when it enforced the 1926 Act, particularly stemming from the substantial presence of foreign multinationals located in the UK. The 1926 Act did not apply to imported goods that had undergone a ‘substantial change’ through a treatment/process in the UK, and the difficulties in applying this test in practice ultimately led to the demise of Board of Trade prosecutions under the 1926 Act, and a renewed focus by the Board on its powers to prosecute ‘false trade descriptions’ contained in earlier legislation: section 2(1) Merchandise Marks Act 1887.

Biographies: Elena Cooper is Senior Research Fellow at CREATe, University of Glasgow. Her work to date includes Art and Modern Copyright: The Contested Image (CUP, 2018) which was shortlisted by the Society of Legal Scholars for the Birks book prize for outstanding legal scholarship in 2020. Elena’s research is currently funded by an Early Career Fellowship from The Leverhulme Trust and mentored by Prof. Lindsay Farmer, University of Glasgow. Elena joined CREATe in 2014 from the University of Cambridge where she was Orton Fellow in Intellectual Property Law at Trinity Hall and also completed her PhD on copyright history supervised by Prof. Lionel Bently.

David Higgins is a professor in the accounting and finance division of Newcastle University Business School.  He has published widely on the business and economic history of merchandise marks and trade marks.  His recent publications in this field include, Brands, Geographical Origin, and the Global Economy, (CUP, 2018), and National Brands and Global Markets (edited with Nikolas Glover, Routledge, 2023).

Alison Firth originally studied physics, but curiosity about patents led her into the law. Her interests cover the laws of intellectual property and their interaction with other areas of law, such as contract and competition law. She is Chairman of the British Literary and Artistic Copyright Association, ‘BLACA’ (the UK member organisation of ALAI, the Association Litteraire et Artistique Internationale) and a committee member of the European Intellectual Property Teachers’ Network. The 5th edition of her book Trade Marks: Law and Practice with Peter Cornford and Andrew Griffiths was published in December 2020. She is Professor emeritus in law at the University of Surrey and a visiting professor at Newcastle Law School.