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The 23rd Madrid WG Session
The 23rd Session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks was held in Geneva from 22 to 26 September 2025.
Members of the MARQUES International Trade Mark Law and Practice Team (Gavin Stenton, Paola Tessarolo, Jessica Le Gros, Tove Graulund, Robert Rauther, Manuela Bruscolini and Joseph Sarmiento) attended the session remotely and in-person.
They summarise the key decisions and discussions below.
Proposed introduction of a requirement for Contracting Parties to issue national or regional registration/renewal certificates
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Recordings of all the Working Group sessions, and transcripts, are available on WIPO's website |
The Working Group discussed this potentially significant topic in considerable detail, having regard to the differing approaches that are currently adopted by Contracting Parties, some of whom already observe this practice.
Moving forward, the International Bureau (IB) was tasked with preparing a new document refining the proposals in light of certain views and concerns expressed by several delegations, and conducting a survey among the Offices of Contracting Parties and users of the Madrid System on the need for and practical advantages of such certificates and to present a document with its findings.
Other proposed amendments to the Regulations
The introduction of a new official form in PDF format to cancel the recording of the appointment of a representative was agreed, noting that an online version of this form already exists.
The Regulations were updated to reflect the fact that the address of an opponent referenced in a notification of provisional refusal does not need to be indicated by the Offices of designated Contracting Parties.
The Working Group discussed the possible introduction of a new requirement whereby statements of grant of protection would indicate the date on which protection was granted as well as the date as from which the use requirement starts, aimed at addressing the divergent approaches contained in the laws of Contracting Parties.
A number of practical concerns were voiced by several delegations as well as some suggestions that the IB will now consider when preparing a new document.
The Regulations were also amended to allow for changes in the electronic mail address of holders and representatives to be recorded in the same way as a change of name or physical address.
Proposal by the delegation of the United Kingdom
The UK's proposal contained some very interesting ideas aimed primarily at enhancing user experience of the Madrid System, including the possible introduction of a centralised replacement procedure via the IB, partial renewal of IRs for certain goods/services (vacating the current need for partial renunciation prior to renewal) and the faster allocation of IR numbers, particularly in the context of adding subsequent designations to pending IR applications where an IR number is yet to be generated.
The Working Group agreed that discussions should continue on these topics and requested that the IB (in coordination with the UK delegation) produce a more detailed document that further elaborates on and discusses the legal, operational and other practical implications of these proposals.
The IB was also asked to include possible improvements to Madrid Monitor and processing timeliness as agenda items for the next Madrid Working Group Roundtable meeting.
Proposal by the delegation of Moldova
Discussions continued in respect of the Republic of Moldova’s proposed amendments to the Regulations that would allow Contracting Parties to certify international applications filed by two or more applicants who jointly own the basic application/registration, when only one of them has a qualifying connection with the Contracting Party of the Office of origin.
Following a lack of consensus, discussions on this proposal will continue in the 24th Session, with an emphasis on keeping the Madrid System closed to members (rather than going down the PCT route).
Dependency
Having regard to the IB's survey on the incidence of bad faith; the use of central attack; and other grounds invoked to request the cancellation of an international registration due to the ceasing of effect of the basic mark, the Working Group continued to discuss the various proposals regarding the dependency of the IR on the basic mark, with renewed interest being expressed in support of reducing the period to three years.
In the absence of consensus, the Working Group agreed to continue discussions at the 24th Session.
Possible introduction of new languages
The proposals to introduce new official languages into the system, including Chinese, Russian, Arabic, Japanese, Portuguese and German, continued to be discussed.
The Working Group continued to highlight the need to promote multilingualism and inclusivity while balancing feasibility and costs.
Discussions will continue during the 24th Working Group Session for which the IB will produce updated statistics, technical assessments and feasibility studies around IT, differentiated translation and the possible introduction of non-Latin characters and non-Arabic numerals.
Posted by: Blog Administrator @ 14.25Tags: Madrid System, WIPO, Working Group,



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Value of counterfeit articles seized in EU reaches record high
The number of articles detained at the EU border and in the internal market fell in 2024, according to a report by the European Commission and EUIPO, but their estimated retail value increased.
According to the report, “EU Enforcement of Intellectual Property Rights: Results at the EU Border and in the EU Internal Market 2024”, there were 112 million counterfeit articles seized in 2024, a fall of nearly 26% compared to 2023, but a rise of over 30% compared to 2022.
However, the estimated retail value of articles seized in 2024 reached a record high of €3.8 billion. This was attributed to higher unit prices of the counterfeit good seized.
Authorities from seven EU Member States (Italy, Spain, France, Netherlands, Portugal, Romania and Poland) accounted for 90% of the volume of goods detained.
Almost 74% of the products detained were recorded CDs/DVDs (including software), toys, clothing, clothing accessories, cigarettes (including electronic cigarettes), perfumes and cosmetics.
More information is available on EUIPO’s website here.
EUIPO has launched the IP Enforcement Detentions Dashboard. This new platform presents the EU enforcement figures in a more accessible format.
Using the dashboard, you can explore the data based on: overall figures, internal market detentions by police and market surveillance authorities, or border figures for customs detentions.
Illustration extracted from the report
Posted by: Blog Administrator @ 15.10Tags: EUIPO, European Commission, counterfeits, ,



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Book review: European Fashion Law (second edition)
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
Posted by: Blog Administrator @ 08.24Tags: book review, fashion law, Rosie Burbidge,



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Podcast on scam invoices
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.
Posted by: Blog Administrator @ 10.11Tags: scams, misleading invoices, EUIPO,



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Registration open for Meet the Judges, Munich
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
Posted by: Blog Administrator @ 12.44Tags: Meet the Judges, Munich, DPMA,



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Kuwait sets precedent with filmed destruction of counterfeit character stationery
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:
- No copyright notices: None of the items bore the © symbol or any reference to the underlying copyrights.
- No licensee/distributor identification: Packaging lacked an authorised manufacturer, licence number, company name or verifiable contact details.
- 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
- Keep evidence ready: Maintain up-to-date copyright registrations, chain-of-title documents, and specimen artwork.
- Codify authenticity markers: Provide Customs with quick-reference guides on authorized licensee identifiers, packaging tells, and quality benchmarks.
- Use multi-right strategies: Where trade marks are not locally registered, combine copyright, passing off/unfair competition, and consumer-protection frameworks.
- Invest in partnerships: Training and clear points-of-contact help accelerate authenticity confirmations and forfeiture decisions.
- 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.
Posted by: Blog Administrator @ 14.58Tags: copyright, Kuwait, destruction,



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GSK succeeds in bad faith case in Turkey
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
Posted by: Blog Administrator @ 08.45Tags: Turkey, GSK, bad faith,



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