02/07/2026
Session 5: Trademarks -
Recent developments and
strategies
Anna L. King, Banner Witcoff (US)
Michael Conway, Birketts (UK)
Dave Bowden, Clark Wilson (CA)
UK Trade Mark Update
Michael Conway, Birketts LLP
26 June 2026
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Fact pattern scenario(1)
The claimant
•
KatzBrew is a leading craft beer manufacturer with
nationwide reputation for its conventional beer offering
•
Launches new Pineapple beer, sold in 440ml cans and 4x4 can
cardboard packaging – first foray into fruit-flavoured beer
market
•
Deliberate departure from previous packaging strategy
•
Multi-million £ advertising push
•
Proves to be a hit in the marketplace, sells over £20 million
over a 2 year period, 99% through retail outlets, ca. 50%
supermarkets
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Fact pattern scenario (2)
Registration strategy
•
Registered figurative trade mark consisting of a ‘flattened’ 2D
representation of the Pineapple beer packaging
•
Filed in
Class 32 (beer; fruit-flavoured beer; craft beer)
Class 30 (fruit beverages; flavourings; syrups)
Class 33 (alcoholic beverages other than beer, incl. cider,
spirits, cocktails)
Class 35 (retail services; online marketplace services)
Class 43 (bar and hospitality services)
•
Specifications drafted broadly, capturing products/ services
not in current pipeline
•
Email from Head of Legal to Brand Team: “
We should assume
fast follower activity in this space – recommend filing as widely as
possible to create a barrier to entry
.”
•
Internal commercial email: “
We’ll never go into (e.g.) spirits or
mixers, but a wide spec puts us in a stronger position if other
retail brands go down the pineapple route
.”
•
Strategy note (Board pack extract): “
Objective is to ‘ringfence’ the
pineapple concept in alcohol and adjacent categories to block
others from moving in
.”
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Fact pattern scenario (3)
The defendant
Discount supermarket Crumps has a well-known strategy of
producing ‘dupes’ just far enough away to avoid infringement
Spots success of KatzBrew product and instructs marketing team
to launch a ‘dupe’ pineapple beer
Mimics “descriptive” indicators on the packaging (including
pineapple imagery) but with different distribution, switches order
of words and uses inherently distinctive CRUMPS name in
expectation this will avoid infringement
KatzBrew alleges trade mark infringement based on confusion
and reputation/ unfair advantage, Crumps fights back with a
counter-challenge that Katz’ broad trade mark registrations are
invalid due to lack of intention to use across their scope
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Case law (1)
Thatchers v Aldi (CoA decision Jan 2025)
- High Court – no infringement; Aldi’s lemon cider may have
been inspired by Thatchers and created a mental association,
but it was not similar enough, misleading enough, or
exploitative enough to amount to trade mark infringement or
passing off – reflecting historic approach of English Courts
- Court of Appeal – overturned and found infringement based
on taking unfair advantage of reputation:
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Similarity understated by original judge
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“Link” not accidental – central to Aldi strategy
-
Aldi made zero investment in marketing yet sold large
quantities = objective evidence of unfair advantage
-
Intent of limited relevance
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Case law (2)
Skykick (SC decision Nov 2024)
Sky commenced trade mark infringement and passing off
proceedings against SkyKick in 2016
In defence, SkyKick argued that the huge breadth of
goods/services covered by Sky’s registrations indicated they had
been filed without a genuine intention to use the marks for all
the goods/services covered, rendering them invalid on the
grounds of bad faith
UK Supreme Court agreed – it held no intention to use a trade
mark for some or all goods/ services applied for may result in the
(**
partial
**) cancellation of a registration on the grounds it was
filed in bad faith
UKIPO PAN 1/25 issued June 2025
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Bonus theme – post-sale confusion
Iconix v DreamPairs (SC, June 2025) and Dryrobe v D-Robe (HC, December 2025)
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FICPI ABC Nashville Conference
Trademarks (Canada)
David MG Bowden
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Quick Update: CIPO Timelines
Time to First Exam: 7.9 Months
No difference in timelines for Madrid vs. Domestic or
custom goods/services vs. pre-approved goods/services
Secondary Examination: highly variable
Approval to Advertisement: 6 to 8 weeks
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Fact Pattern (Canada)
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Your client, PharmaCo, has applied in Canada to register
REDI-TREAT for prescription pharmaceutical preparations.
The application has been opposed by a competitor,
MediCo, based on its prior rights in the trademark READY
CURE, also used in association with prescription
pharmaceutical preparations.
PharmaCo seeks advice on whether it should decline to file the evidence, and then seek to file it as fresh
evidence on an appeal to the Federal Court (if the Board’s decision is unfavourable).
PharmaCo intends to rely on a survey of
dispensing pharmacists to demonstrate that there
is no likelihood of confusion between the parties’
trademarks among this group.
The survey will likely not be completed before
PharmaCo’s evidence deadline and may not be
available until several months later.
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Issue 1: Opposition Appeal Procedure
Bottom line: it may be possible to file evidence on appeal, but for
the most part it is more prudent to seek case management and
attempt to set deadlines through that process—even where the
other side does not consent.
A party is no longer entitled to file fresh evidence on appeal as of right.
Opposition Board now has the authority to designate proceedings as case-managed.
Leave to file new evidence is not always granted:
• Leave granted:
Products Unlimited, Inc v Five Seasons Comfort Limited
, 2026 FC
48 (transitional period, no prejudice)
• Leave refused:
Enteractive Media Inc. v. Gamechanger Media, Inc
., 2026 FC 843
(lack of credibility, inadequate explanation of delay)
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Issue 2: Admissibility of Survey Evidence
Canadian Courts and the Opposition Board are skeptical of expert evidence which
is directed towards likelihood of confusion.
Expert evidence relating to surveys has been characterized as an exception to this,
but is still approached with “caution”:
Masterpiece Inc. v Alavida Lifestyles Inc
, 2011
SCC 27
Online Surveys:
Promotion in Motion, Inc v Hershey Chocolate & Confectionery LLC
,
2026 FCA 40
Bottom Line: Survey evidence can be admissible subject
to strict requirements relating to reliability and validity.
There is always a risk that they could be excluded.
However, online surveys are still possible.
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Issue 2: Admissibility of Survey Evidence
Explanation
Issue
Validity Issues
Priming bias
“The right questions” were not put to the
survey participants
No “person in the loop”
The questions were not put to the participants
“in the right way”
Availability of a “back button”
The questions were not put “in the right
circumstances” to participants
Reliability Issues
Unclear if in-person survey would produce
same results
Replicability
“[A]ctual Canadian Swiss-chocolate consuming
population.”
Relevant population
“Fundamental Issue”
The inability of the experts to “ensure that the
identity of study participants was
unquestioned” or to “control the survey
environment and testing parameters”
Design insufficient to address hearsay problem
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Issue 3: Relevant Populations for Pharmaceuticals
Confusion test is hypothetical: it doesn’t matter if patients may
not actually see the trademarks at issue.
Even where a patient’s choice as a consumer is relatively small,
that choice is still relevant.
Relevant population for prescription pharmaceuticals includes physicians,
pharmacists, AND patients:
Samsung Bioepis Co, Ltd. v. Novartis AG
, 2025
FCA 212
Bottom line: even if the survey is admissible, its focus on
dispensing pharmacists means that it likely won’t be
determinative, and may not be afforded much weight.
FICPI ABC Conference
Nashville
Anna King
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AI Fakes – Fact Patterns
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Fact Pattern 1
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Your client, a famous celebrity, has become aware of AI-generated images of them online
with fake audio of their voice. The images show the celebrity at a World Cup match that
they never attended.
AI Fakes – Fact Patterns
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Fact Pattern 2
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That same celebrity has become aware of AI-generated video of them used on the online
retail website for a vendor of sports apparel with fake audio in their voice endorsing the
vendor.
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AI Fakes – Fact Patterns
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Fact Pattern 3
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Your client, Acme Industries, has become aware of emails being sent using their company
name and the signature and photo of their well-known CEO.
Session 6: AI in Patent Practice
Moderator: C. Gregory Gramenopoulos, Finnegan
Panelists: Chris Parsonson, Solve Intelligence
Helen Chacon, Legora
Oskar Block, Stilta
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