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.

Leo Longauer, Pablo Vanel, Professor Lukasz Zelechowski and Tobias Cohen Jehoram

Parallel trade, the second hand market, repair/refurbishment, the circular economy and trade mark exhaustion were all on the menu in part 3 of this year’s Annual Conference in The Hague: “Brands in international trade”. The panel was moderated by Tobias Cohen Jehoram, De Brauw Blackstone Westbroek, The Netherlands and Member of the MARQUES Council.

In his presentation, Professor Lukasz Zelechowski, University of Warsaw, Poland focused on de-branding, exhaustion and the circular economy, and exhaustion in the metaverse. He discussed cases including C-555/08 Portakabin and C-129/17 Mitsubishi, and noted the controversial conclusion in the latter case: “De-branding whether or not followed by re-branding could hardly be considered as not constituting a legitimate reason to oppose further commercialisation.” In reaching its finding, he said the Court was striving towards uniformity. Prof Zelechowski added that de-branding is covered by the exclusive right in countries such as France and Italy but not in other EU Member States.

However, he raised doubts about whether de-branding fits into the concept of actionable use and whether there is interference with the origin function. He also queried where the current legal framework sits in regard to de-branding for sustainability reasons. “De-branding seems more like a separate sui generis form of exclusivity,” he said. “It’s something more than a regular trade mark exclusivity. The question is political: do we want that exclusivity or not?”

Tuesday evening's Welcome Reception in the World Forum, The Hague

Turning to circular economy products, he summarised the recent EU legislation in this area. “This is a trade mark law issue because materials used in circular practices may contain a trade mark,” he said. The question therefore arises: which “legitimate reasons” might prevent trade mark exhaustion? There was a missed opportunity for guidance on this question in the CJEU case in EPAL. “We would likely have to move from exhaustion to infringement criteria and exceptions and limitations,” said Prof Zelechowski.

Following on, Pablo Vanel, Western Digital UK Ltd, a manufacturer of hard disk drives, discussed the two main challenges he faces: parallel trade and import of counterfeit products.

He said that parallel trade has a significant impact on the company’s business, by eroding market share, undermining local pricing strategies and disrupting market stability – ultimately undermining profitability. Western Digital responds to this by monitoring online platforms, carrying out online enforcement and investigating sellers. “The last resort is litigation,” he said.

Pablo also discussed the CJEU decision in HP v Senetic and the sale of unauthorised refurbished and re-labelled products, which are sold as “new” products to consumers. In Fennia v Philips, he said, the trade mark holder was deemed to be the producer of the goods and liable under the product liability directive.

Finally, Leo Longauer, LVMH, France and 1st Vice-Chair of the MARQUES Council, focused on the buying and selling of goods in the second-hand market. “This is more than a trend,” he said, and offers several advantages to customers such as availability, affordability and accessibility. But the risks include counterfeiting, return fraud, trade mark and copyright infringement, and upcycling. Further risks to businesses include impact on brand perception and lost sales.

Counterfeits are growing in availability and quality, making authentication more difficult. “No one except the brand owner can say whether or not something is authentic,” said Leo. However there are some positive signs for brand owners: in the US, Chanel won $4 million in damages in a case against What Goes Around Comes Around, which was selling vintage and pre-owned luxury goods.

Upcycling is the process of modifying existing products for resale. “There is a tension between the interests of IP holders and free circulation of trade,” said Leo. The US case Rolex v La Californienne was decided in favour of the brand owner and in PRS USA Holdings v VNDS, a California court found that hats made from Ralph Lauren swim shorts were clearly different from the original product and the brand owner was granted an injunction and $800,000 in damages.

Sustainability in IP

Sebastien Vitali, Virginia Cervieri, Susana Fernandez Martin and Chris Thomae

The first day’s final part, “The rise of sustainability in IP” looked at various green initiative and their significance for IP.

Susana Fernandez Martin, INDITEX, S.A., Spain, Member of MARQUES Council and Cyberspace Team, described how the company ensures a low level of surplus goods. It aims to minimise the environmental impact in product design, manufacturing, distribution and retail, use and end of life.

Virginia Cervieri, Cervieri Monsuarez, Uruguay, Member of the MARQUES Anti-Counterfeiting & Parallel Trade Team, described the Be Green, Take Action campaign to transform waste into new products. One of its campaigns, Entre Manos, converts seized counterfeit merchandise into useful products. Another, Score Green, recycles counterfeit plastic into sustainable basketball boards.

Sebastien Vitali, Johnson Controls, Switzerland, Member of MARQUES Council and Member of the Amicus Curiae Team, talked about the “trifecta” to reduce carbon emissions and operational costs in buildings: building efficiency, electrification and digitalisation. He asked: how does this connect with IP? One way is that the company made a commitment to invest at least 75% of new product R&D in climate-related innovation. In 2024, the proportion was 88%. It has several innovation initiatives to achieve this.

Moderator Chris Thomae, Dumont, Mexico, and Member of the MARQUES Programming Team, led a discussion among the panel on questions such as: how do you ensure that the IP team is involved in sustainability initiatives? How do you coordinate the legal, engineering and other teams? How do you approach collaborations? And how do you measure success when it comes to aligning IP with sustainability goals?

Hugues Derème, Claudia Pappas and João Negrão

MARQUES Chair Claudia Pappas, Thyssenkrupp Intellectual Property GmbH, Germany opened the 39^th MARQUES Annual Conference in The Hague this morning (17 September).

Following a dramatic entrance that featured characteristic Dutch sights and music, she spoke about the host city of The Hague and MARQUES achievements during the past year and welcomed guests from EUIPO, WIPO, BOIP, ECTA and CTA.

She also thanked the more than 440 Team members who drive the work of MARQUES and announced the creation of the MARQUES Rising Star Award.

As part of the Opening Ceremony, Hugues Derème, Director General, Benelux Office for Intellectual Property (BOIP), The Netherlands, gave a presentation focusing on three themes, all of which relate to BOIP 2030, the Office’s Strategic Plan:

First, from registration to significance. “IP Offices were seen as registries; interactions with users were purely transactional. This time is over,” said Mr Derème. “IP Offices must be relevant and we must make a difference.” This means helping businesses, especially SMEs, to understand how to use IP, and engaging with IP professionals.

Second, from borders to bridges. “In a digital world, customers don’t think in jurisdictions, counterfeiters don’t respect them and creators don’t look at them, “ said Mr Derème. He said BOIP wants to build bridges with users, businesses and society at large. For example, it has a new data strategy, cooperation projects to support dispute resolution and IP finance and investment in public affairs and new tools such as Name checker. “With all these actions, we are getting IP out of its niche,” he said.

Third, moving from ownership to stewardship. “IP is about protecting creativity responsibly, balancing protection with openness,” he said. “IP is not just about locking up, it’s about creating opportunities while keeping the ecosystem fair and competitive.” With this aim, BOIP is looking at its fee structure to make it fit for purpose, as well as internal policies and interactions with stakeholders and others.

Mr Derème closed by noting that The Hague Agreement was signed on 6 November 1925 and an event will take place to mark the 100^th anniversary at the Peace Palace on 6 November this year.

Big thinking about how we work

Gregor Vos, Brinkhof, The Netherlands and Member of the MARQUES Programming Team. introduced part 1 of the Annual Conference, titled: “How will external factors change the way we work?”

Professor Daniel J Gervais

Professor Daniel J Gervais, Vanderbilt University, Nashville, USA asked: Who makes IP rules now? He traced the history of the Paris Convention and the “convergence” of rules since 1883. “It’s a truly universal agreement, with 181 countries,” he said. In the 1980s, there was a boom in international trade that led to the TRIPs Agreement and the WTO dispute settlement body and appellate body.

Today, the US is shifting to a unilateral stance on many issues, and that includes resistance to the WTO. “In a way, we’re back to pre-1883,” said Prof Gervais, who asked: will countries favour tariffs and trade restrictions rather than convergence? But commerce is international, and businesses may therefore increasingly rely on contracts.

“There’s a big difference between a contract and a treaty,” said Prof Gervais, noting that treaties incorporate the public interest. As rules become more “fuzzy”, the importance of terms of use in user agreements is growing. “Clearly the system is under strain,” said Prof Gervais. “The price of inaction will be high”. He predicted that private rules will fill the void and regulation on topics such as AI will diverge.

AI and trade marks

Professor Dev Gangjee

Picking up on those concerns, Professor Dev Gangjee, University of Oxford, UK discussed the role of technology and AI in trade marks, from classification to machine translation and consistency of decisions. “AI has quietly slipped into the trade mark system, and is very useful in a number of domains,” he said, but added that we should “calibrate our expectations” about AI.

He asked: How good is AI today? Focusing on machine learning image recognition in EUIPO’s TMView and WIPO’s Global Brands Database, he said that “Content-based image retrieval is difficult: expect the tools to misfire.” Image recognition is a hard task, and there are limitations.

Second, he asked: How far can AI go? Citing research that used ChatGPT in trade mark examination and other research using a machine learning tool, he suggested that AI can decide clear cases but is less confident, and less useful, when it comes to borderline ones.

Finally, he asked whether agentic AI will lead to the death of trade marks: “Where is the average consumer going if you have a robot consumer?” Noting that AI undermines autonomy, Prof Gangjee said that research suggests AI/autonomy trade-offs are possible in areas such as buying complex products but not generally.

For example, people may rely on trusted apps to recommend and even make buying decisions in certain cases. “We are making some progress to a hybrid, AI-assisted consumer,” he said. This raises questions for trade mark law, such as: do we revisit the Google France consensus? And will there be a move towards dilution claims rather than confusion?

Concluding the presentations, Prof Gervais briefly discussed AI, copyright and patents. “What is the future for human creators and inventors?” he asked. At the moment, courts are deciding these questions, but more debate is needed. “This is bigger than the internet,” he said. “I urge caution when trying to persuade a court that a machine can be inventive or creative.”

“We in the IP world have a very important task to ensure that when we say progress, we mean human progress,” he concluded.

Keynote interview

João Negrão and James Nurton

Part 2 of the Annual Conference comprised an interview with João Negrão, Executive Director, EUIPO conducted by the MARQUES editor, James Nurton and introduced by Claudia Pappas. Claudia welcomed Mr Negrão to the Annual Conference and commented on the extensive collaboration between EUIPO and MARQUES.

In a short presentation and in response to questions, Mr Negrão discussed the Office’s evolution and its Strategic Plan 2030, the digital transformation and the impact of AI tools, collaboration with users, new responsibilities in the areas of geographical indications and copyright, improving access to the IP system and promoting innovation in Europe.

This year’s Annual Conference is taking place all this week. Further posts will be published on the MARQUES blogs during the week.