Charlotte Duly of the MARQUES Education Team reviews the recently released second edition of European Fashion Law, by fellow MARQUES member Rosie Burbidge (published by Edward Elgar Publishing, priced from £80 and available here).

The second edition of this book is significantly updated from the first and includes not only developments in case law and legislation but considerations on the state of the fashion industry due to advancing areas such as digital fashion. Of course, Brexit is ever present and the changes due to this seismic event are also incorporated.

The book focuses on the position in the United Kingdom and EU, with particular emphasis on the key fashion capitals of London, Paris and Milan.

Quite simply, this book is a joy to read. It is beautifully laid out, with a helpful visual key and practical tips that may not strictly cover legal issues but are useful to read from a commercial perspective. Whilst fashion law is not a defined legal area as such, there are core issues that affect fashion businesses and these are covered in a clear and concise manner.

There is a focus on intellectual property and, of course, trade marks, copyright and designs feature in detail, but there are other aspects included such as incorporating a company and contractual issues that relate to fashion businesses, including agency and distribution agreements. Of particular relevance to many, not just those in the fashion industry, is the section about posting online and considering the IP rights involved as well as other aspects of publicly sharing. 

The book acknowledges that in the fashion business, at some point or another, parties are likely to find themselves both “wielding the weapon” of their IP sword and being on the receiving end of such armoury.

Fashion is a fast-paced industry, driven by changing seasons and trends, and the difference between following such a trend and copying can be blurred. This book highlights the importance of securing IP rights at the relevant time (as soon as possible!) whilst acknowledging that disputes do happen and provides guidance when that is the case.

There is a useful discussion on unregistered rights, in particular copyright and unregistered design rights, and the territories where registration of copyright should be considered. Practical tips including collating evidence of unregistered rights and dated copies of work are incredibly useful, as is the high-level summary of the various options for protecting a design at European level, including the UK, comparing registered designs, unregistered design rights and copyright. 

Working with models can add complexity to a fashion business. Image rights are important in the fashion industry but often used without definition and there is consideration of whether models can claim their runway performances are protected by performers’ rights. There is a helpful discussion of issues to consider when contracting with models around these topics. Other important issues that a business would need to factor in such as regulation, data security and VAT are also covered.

The new chapter on digital fashion provides an accessible review of the issues where consumer interaction with brands has altered and is continually developing as businesses enhance their output to produce both physical and digital goods.

“Phygital fashion”, being a combination of physical and digital elements such that the physical products have a digital counterpart existing in a virtual environment, and other important novel terminology is explained in a simple and accessible manner. 

A further new addition is a chapter on circular fashion and the trend for upcycling and other uses of products. This is an important area that will continue to grow as we remain ever mindful of environmental issues and the need to reign in the throwaway fashion lifestyle of the past. 

The penultimate chapter of the book is called “Selling Up” and includes key considerations for how to end a business, whether that is due to retirement, or for some other reason. It is crucial to consider the exit plan at the start of any new venture!

Let’s hope that, having produced a second edition of an excellent book covering a wide range of issues that any business should consider, not just those in the fashion industry, Rosie Burbidge does not consider selling up just yet and continues her endeavours in the field of IP and fashion law.

Charlotte Duly is Vice-Chair of the MARQUES Education Team. The Team contributes occasional book reviews to Class 46. The picture shows the cover of European Fashion Law

The latest episode of the Talking MARQUES podcast looks at misleading invoices and payment requests.

The podcast features two guest speakers from EUIPO, Raquel Modesto Damiao and Krisztián Toth, as well as Sarah Bailey, who chairs the MARQUES Anti-Fraud Task Force.

MARQUES is very grateful to the EUIPO representatives for taking part in this episode.

In the podcast, the speakers address questions including:

• What is a misleading invoice or payment request?
• What warning signs should businesses look out for?
• What is the impact of generative AI?
• How are scammers adapting?
• What is EUIPO doing to fight misleading invoice scams?
• What role can user associations such as MARQUES play?

The speakers also provide practical tips on reporting scams and cooperating with other users and discuss recent legal precedents in this area.

You can listen to the Talking MARQUES podcast on the MARQUES website here and on Spotify. There are now 28 episodes of the podcast available in the archive, with more due to be added before the end of this year.

You can now book your place at the next MARQUES Meet the Judges seminar, which takes place at the DPMA (pictured) in Munich on Friday 24 October.

The seminar will include eminent German Judges, representatives of the DPMA, members of the Federal Patent Court and EU General Court as well as industry representatives.

It will focus on the analysis of topical German and European trade mark case-law and administrative decisions and appeal judgments on topics such as:

• freedom of speech and arts,
• development of European trade mark law,
• trade marks and geographical indications, and
• weak trade marks in collision.

The seminar will be in German and the registration fee is €475. It is organised by MARQUES with DPMA and Markenverband.

The programme starts at 08.45 and concludes at 17.00. It includes lunch and coffee breaks.

The MARQUES Meet the Judges events provide a great opportunity to hear from key decision makers and discuss topical issues. They are always very popular and early booking is recommended!

The programme is available to view here and you can register on the MARQUES website here.

Photo from MARQUES archive

Sara Omran and Slobodan Petosevic report on a recent enforcement action in Kuwait.

Kuwait Customs intercepted a consignment of children’s stationery items imported from China that displayed unauthorised reproductions of famous characters and visual elements.

On inspection, Customs recorded the following:

1. No copyright notices: None of the items bore the © symbol or any reference to the underlying copyrights.
2. No licensee/distributor identification: Packaging lacked an authorised manufacturer, licence number, company name or verifiable contact details.
3. Quality concerns: The items were of very low quality, inconsistent with the standards of genuine licensed merchandise.

Because certain relevant trade marks were not registered locally at the time of seizure, Customs relied on copyright registrations (supported by rights-holder input) to establish ownership of the character and artwork rights.

The rights holder confirmed the goods were not genuine or licensed. This position was conveyed to Customs and forfeiture requested.

Legal basis and enforcement rationale

• Copyright as a primary tool: Character artwork and associated visuals are protectable works. Even in the absence of local trade mark registrations, copyright provides a robust legal basis for border enforcement against unauthorised reproductions.
• Reliance on foreign registrations: Registration certificates from major jurisdictions can serve as persuasive evidence of subsisting rights and ownership, enabling swift border measures.
• Consumer-protection and labelling angles: The lack of compliance markings and traceable supply-chain information indicates consumer deception risk, supporting forfeiture.

Outcome

On 17 September 2025, the seizure report was issued, and Kuwait Customs conducted a filmed destruction – a first-of-its-kind precedent for this category in Kuwait. The outcome has been circulated among enforcement agents and will serve as a benchmark for future actions.

Destruction inventory (as reported by Kuwait Customs)

• Water cups (various character themes): 637 items
• Sketchbooks (various character themes): 240 items

(Specific character themes are withheld for confidentiality; counts reflect the filmed destruction log.)

Why this matters

• Precedent value: The case demonstrates decisive use of copyright-based border measures, even where local trade mark portfolios are incomplete.
• Deterrence effect: Public-sector sharing of outcomes increases operational awareness and discourages imports of low-quality, unlicensed character merchandise.
• Regional signal: It aligns Kuwait’s practice with international norms on rights-holder verification and border forfeiture across the children’s goods and FMCG sectors.

Practical takeaways for rights holders

1. Keep evidence ready: Maintain up-to-date copyright registrations, chain-of-title documents, and specimen artwork.
2. Codify authenticity markers: Provide Customs with quick-reference guides on authorized licensee identifiers, packaging tells, and quality benchmarks.
3. Use multi-right strategies: Where trade marks are not locally registered, combine copyright, passing off/unfair competition, and consumer-protection frameworks.
4. Invest in partnerships: Training and clear points-of-contact help accelerate authenticity confirmations and forfeiture decisions.
5. Document outcomes: Encourage post-action reporting and, where appropriate, filmed destruction to build institutional memory and deterrence.

Conclusion

The August 2025 seizure and subsequent filmed destruction mark a significant advance in IP enforcement in Kuwait. By acting on clear indicia of unauthorised character use and leveraging copyright registrations with rights-holder confirmation, Kuwait Customs delivered a swift, well-documented result that strengthens marketplace integrity – especially in the back-to-school trade.

By Sara Omran, Head of Anti-counterfeiting at CWB, and Slobodan Petosevic, COO at CWB. Slobodan is a member of the MARQUES Copyright Team. CWB represented the brand owner in this matter. Picture provided by the authors.

Mutlu Yıldırım Köse and Begüm Soydan report on a case in Turkey concerning the registration of the trade mark Clindoxyl and its use to threaten infringement proceedings against the genuine right holder, in which the  courts protected the rightful owner and invalidated the bad faith registration.

Background

The dispute concerned the bad faith registration of a trade mark that had previously been registered in Türkiye in the name of Stiefel Laboratoires, Inc., an affiliate of GlaxoSmithKline Plc, the global pharmaceutical group (GSK).

GSK had been commercially using the Clindoxyl trade mark since 2010 in Türkiye, particularly in connection with acne treatment products, with a valid marketing authorisation from the Turkish Ministry of Health.

Although the trade mark was applied for in by GSK 2006 and registered in class 5 in 2007, the protection lapsed in 2016 due to an unintentional failure to renew.

In 2019, the defendant obtained registration for the Clindoxyl trade mark in class 5. Within 10 days of the registration, it sent a cease-and-desist letter to GSK Türkiye, accusing the company of trade mark infringement with the threat of collecting its products on the market based on the recent trade mark registration for Clindoxyl.

GSK immediately responded with a formal letter, reminding the defendant that it is the genuine right owner of the Clindoxyl trade mark and demanding assignment of the trade mark. However, the defendant asked for payment of a significant amount to assign the trade mark to GSK.

As this is a clear indication of bad faith, GSK decided to initiate an invalidation action against the defendant and alleged that the defendant acted in bad faith by knowingly exploiting the lapse in registration to take advantage of GSK’s established brand reputation and commercial presence.

The defendant denied the bad faith claims, arguing that GSK did not have a valid registration for this trade mark and that the goods fall into different trade mark classes as the defendant aims to use the trade mark in terms of room fragrances in class 5 while GSK’s use should be accepted for goods in class 3.

Decision

The first instance court ruled in favour of GSK and decided to invalidate the defendant’s trade mark, with satisfactory reasoning (Izmir Civil IP Court, E. 2020/80 K. 2021/95 T. 16.06.2021).

The court concluded that GSK is the genuine right owner of the Clindoxyl trade mark since it was understood from the evidence in the file that it has used the trade mark both in Türkiye and abroad long before the application date of the defendant’s trade mark and it is not coincidental that the defendant chose to register the exact same Clindoxyl trade mark, which is highly distinctive. Therefore the defendant aimed to gain unfair benefit from this trade mark although she was aware of the genuine right owner.

The defendant’s appeal was rejected by the Regional Court of Appeals (Izmir Regional Court of Appeals, E. 2021/1077 K. 2024/421 T. 13.03.2024). Upon the defendant’s second appeal, the Court of Cassation upheld the decision, confirming the invalidation of the defendant's trade mark (11th Civil Chamber of Court of Cassation, E. 2024/3134 K. 2025/1450 T. 04.03.2025).

As a result, GSK succeeded in the invalidity of the bad faith registration, which will no longer serve as the basis of a potential infringement case and was also creating an obstacle to the registration of its own trade mark.

Following the finalised court decision, the trade mark was declared entirely invalid with retroactive effect by the Turkish Patent and Trade Mark Office, which will enable GSK to register its own trade mark.

Comments

This ruling sets a strong precedent for protecting trade mark holders against bad faith registrations in Türkiye, especially in cases where a lapse or gap in registration is exploited by third parties. It affirms that trade mark rights are rooted not only in formal registry entries but also in actual use, commercial recognition and ethical conduct in trade.

By citing earlier jurisprudence and reminding about the duties of a diligent trader before applying for a trade mark registration, the court drew a clear line between opportunistic filings and legitimate registrations.

Recognising the importance of genuine and earlier use, this decision contributes to the development of trade mark jurisprudence in Türkiye and serves as a robust legal tool for preventing misuse of the registration system through bad faith.

Mutlu Yıldırım Köse is a partner and Begüm Soydan is managing associate of Gün+Partners in Turkey, which represented GSK in this case. Mutlu is a member of the MARQUES Cyberspace Team

The Benelux Office for Intellectual Property (BOIP), along with the Netherlands Patent Office, FPS Economy, VLAIO and Wallonie Entreprendre, have relaunched Create, Protect & Benefit.

This cross-border awareness campaign helps entrepreneurs in the Netherlands and Belgium recognise how IP affects their daily business decisions, including before they realise it.

In a statement announcing the relaunch, Hugues Derème, Director General of BOIP, said: “With Create, Protect, Benefit, we want to make clear that it is crucial for any entrepreneur to have this on his radar from the very beginning. We show how questions about innovation, collaboration and business growth in most cases are directly linked to intellectual property. Then we provide them with practical information on how to take advantage of IP, even in an early stage of their business.”

The relaunch is part of BOIP’s Strategic Plan 2030: to put IP firmly on the map of the business world through collaboration and public engagement.

“Create, Protect & Benefit proves that smart public policy, behavioural science and communication can work together to raise IP awareness in support of the wider innovation and entrepreneurship ecosystem” said Yves Hoffman, Deputy Director General at BOIP and Chair of the Steering Committee.

Create, Protect & Benefit, which was launched in 2021, has been updated with a new strategy, visual identity and fresh content. This has been developed with creative agency Roorda, which is known for successful awareness campaigns.

The platform www.create-protect-benefit.com features several business case studies and answers to common questions about IP. It is available in Dutch, French and English.

Videos are also available in Dutch and French.

MARQUES was pleased to welcome Hugues Derème to this year’s Annual Conference in The Hague, where he gave an opening presentation. MARQUES continues to cooperate with BOIP and other partners to promote awareness of the value of IP.

The picture shows a screenshot of the Create, Protect & Benefit website.

Geert Lokhorst, Dieuwerke van der Schalk and Michelle Ciotola

Part 6 of the Annual Conference, which is taking place in The Hague this week, covered “Brands in international M&A”.

Dieuwerke van der Schalk, JDE Peet’s, The Netherlands and Member of MARQUES Council and Intellectual Asset Management Team, presented a video summarising the long history of her company, which has been through various mergers and de-mergers. “M&A often happens when you’re not expecting it,” she said.

When should trade mark counsel become involved in an M&A transaction? “It’s often not possible that you can be involved at an early stage,” said Dieuwerke, while Geert Lokhorst, De Brauw Blackstone Westbroek, The Netherlands, contrasted the situations of public and private companies.

Dieuwerke emphasised the benefit of being involved early on, saying IP can make a significant difference to elements of a deal including valuation and structuring. “There may also be a situation where recent brands have not been registered yet, and competitors may be interested in starting opposition proceedings,” said Geert. Competitors may think a company is willing to resolve any issues to avoid jeopardising the deal.

“There’s often a push to make sure major issues are resolved in advance of the transaction,” added moderator Michelle Ciotola, Cantor Colburn LLP, USA, a Member of the MARQUES Intellectual Asset Management Team.

Geert said it is critical that the M&A team knows where and when to find the IP team. “It’s very important to know if you’re speaking the same language as the tax people. When you’re talking about ownership, there may be a difference between economic and legal ownership,” said Dieuwerke. Michelle stressed the importance of “having a good dialogue with all the parties involved”.

The Lewis Gaze Memorial Award was presented before lunch. The winner was Barbara Scheurwater of Utrecht University; 2nd place was Bas Meijer of Leiden University; and 3rd was Harini Venkatesh of Maastricht University.

All the speakers stressed the need to understand the purpose of the deal, as this can affect the IP strategy. Asked how she approaches each deal, Dieuwerke said there is no playbook but it is key to have a very good database, and a list of agreements and oppositions. It is essential to contact the other side to find out what rights they have, which agents they use etc.

“Your employees are also going to be very eager,” she added – so they may proactively register domain names or other assets. Geert also urged the importance of “getting all your agreements in order”. This includes in- and out-licences and coexistence agreements.

Due diligence is important, said Geert, but needs to be prioritised: “You can’t check everything … If you keep asking questions, you’re going to really annoy the IP counsel on the other side.” Michelle cited a deal where a party repeatedly asked for certificates for common-law (unregistered) trade marks, despite being told they did not exist.

Other issues to consider are: what agreements are in place relating to any marks and how will they impact any future holder? What restrictions, such as product or geographical, are in place? Certain things can kill the deal, such as a licence being revoked when the deal is announced or regulatory restrictions.

A point the speakers emphasised was that IP issues continue post-deal, including changes in title and recordal formalities in different jurisdictions. The language used in assignment documents is particularly important in the US, said Michelle: “Make sure the documents you have meet the local requirements, or that you have procedures in place to meet them.” She also stressed the need to understand the corporate structure of the new entity, and where the trade marks will sit within it.

Michelle highlighted the importance of updating records in a timely fashion. As time goes by, it can be hard to remember and find the necessary details. This can lead to extra costs and workload, and the risk of losing rights.

Post-deal, issues can arise if part of a business is sold, meaning the brand can be used by two different companies. “We often see a licence to continue to use the brand for one year,” said Geert. Michelle also stressed the importance of quality controls in licence agreements. In addition, M&A deals can lead to new brand names and company names. Sometimes these decisions are rushed and not thought-through but they still have to be searched and cleared.

Key takeaways from the session were: always have your database in order; don’t be afraid to say “No”; train employees not to get carried away; balance competing teams that are involved in the deal; and the real work often begins post-closing.

International jurisdiction 

Pascal Böhner, Hens de Koning-Ghijsen, Björn Norberg, Alicia Martin and Alberto Camusso

Part 5 of the Annual Conference looked at “International jurisdiction in a changing world”. The discussion was moderated by Pascal Böhner, Bardehle Pagenberg Partnerschaft, Germany, Member of the MARQUES Dispute Resolution Team. He posed questions to Hens de Koning-Ghijsen, Heineken International B.V, The Netherlands, Member of the MARQUES China Team; Björn Norberg, H&M - Hennes & Mauritz , Sweden; Alberto Camusso, Studio Legale Jacobacci & Associati, Italy, Chair of the MARQUES Dispute Resolution Team; and Alicia Martin, PVH Europe B.V, The Netherlands about dispute resolution strategies in a global context.

The Corporate Breakfast was also held today. More than 80 in-house practitioners took part in a Q&A session with EUIPO Executive Director João Negrão.