The MARQUES Anti-Counterfeiting and Parallel Trade Team has published a new report examining the legal frameworks and challenges in regulating counterfeit sales on cross-border e-commerce (CBEC) platforms across 47 jurisdictions worldwide.

The 24-page report has been prepared in cooperation between the Cross-Border E-commerce and Counterfeit Goods and the Online Brand Protection sub-teams. It is available to download on the Team's page here (MARQUES log-in required).

Based on structured surveys of legal professionals in each jurisdiction, the report sheds light on legal measures, operational challenges, and potential strategies for enhancing enforcement mechanisms across different regions. It covers key topics including takedown measures, staydown enforcement, whitelisting, jurisdiction over non-residents, available legal remedies, obstacles, and protection levels.

Key findings at a glance

• Takedown measures are now a widely recognised baseline, with 89% of surveyed jurisdictions confirming their availability – driven by comprehensive legislation such as the EU’s Digital Services Act, the US Digital Millennium Copyright Act, and China’s E-Commerce Law.
• Staydown measures remain far more challenging: only 13% of jurisdictions confirmed general implementation, while 59% face substantial enforcement challenges. The EU stands out as a particularly favourable jurisdiction, building on the DSA’s mandatory repeat-offender regime and the CJEU’s forward-looking preventive measures established in L'Oréal v eBay.
• Whitelisting has gained limited traction – only 13% of jurisdictions report feasibility, with most relying on platform-specific policies rather than legal mandates.
• Jurisdiction over non-resident sellers is reported by 81% of jurisdictions, yet practical cross-border enforcement remains resource-intensive.
• Civil remedies are widely available (91%), but criminal enforcement varies considerably and is often impractical against non-resident operators.

The findings are enriched with detailed regional analysis, comparing practices in the US, China and the EU, and are accompanied by a series of world maps highlighting the main points.

Looking ahead

There is reason for cautious optimism. The EU's comprehensive regulatory approach, which combines the DSA’s platform accountability framework with established CJEU and national court jurisprudence, not only provides a model that other jurisdictions could consider adopting, but also creates market incentives for platforms to implement robust anticounterfeiting technologies on a global scale.

Once platforms invest in AI-powered filtering systems and automated detection technologies to comply with EU staydown obligations, there is every reason to expect these tools to be deployed worldwide, raising protection levels even in jurisdictions that lack the legal framework to mandate such measures.

International cooperation, harmonisation of staydown obligations, and the proliferation of platform-level technical solutions will be crucial in closing the enforcement gaps that currently allow counterfeit goods to proliferate across borders.

For more information, please contact Stefan Schröter of the ACPT Team.

The chart on self-regulatory organisations (SROs) has been updated with new sections on Greece and Poland.

The chart is compiled by the MARQUES Unfair Competition Team and can be downloaded on the Team’s page on the MARQUES website (MARQUES log-in required).

It now covers 14 countries.

Pawel Wac, head of the trade mark team at Polservice, has compiled the report on Poland.

Stefanos Tsimikalis, a Partner of Tsimikalis Kalonarou Law Firm, contributed the report on Greece.

The purpose of the chart is to provide corporate lawyers and attorneys with a practical, user-friendly overview of SROs for advertising and unfair competition matters.

With growing digitalisation and globalisation of advertising and other business activities, it is increasingly important for businesses to familiarise themselves with self-regulation of advertising and other matters.

The chart covers advertising and unfair competition matters, but not consumer protection matters or industry-specific organisations.

The five questions for each jurisdiction encompass: existence and identity of self-regulatory organisations; matters handled; rules, eligible parties and fees; procedure; and penalties and enforceability.

If you have any questions, please contact Alexandra Di Maggio, Rani Mallick, Felipe Dannemann Lundgren or another member of the Unfair Competition Team.

Flags downloaded from https://flagpedia.net

Registrations are now open for the Short IP Training sessions, which start on 17 September 2026 with “Introduction to IP”.

The sessions are stand-alone, online, and free of charge training opportunities focused on key EUIPO procedures and practices, which are organised by the EUIPO Academy Department (Knowledge for IP professionals).

They are designed to provide practical knowledge and develop specific competencies, while also serving as a pathway to more advanced learning opportunities, including the European Trade Mark and Design Education Programme (ETMD EP).

The sessions are open to all IP professionals and each can accommodate up to 300 participants. Early registration is encouraged to secure your place.

Participants who successfully attend all Short IP training sessions will be awarded a certificate of completion.

The tracks may be completed over two consecutive years, and the Academy will keep track of your participation records to ensure that your progress is duly recognised.

For example, if you complete all sessions within the trade mark track this year, you may complete all sessions within the design track next year and still qualify for the final certificate.

The MARQUES Education Team has long been involved in the EUIPO’s training initiatives, having supported the ETMD EP since 2018, with Shane Smyth, José Amorim, Sandra Müller and Charlotte Duly serving as members of the Advisory Council and Examination Board as well as tutors and examiners in the programme.

The MARQUES Education Team supports the introduction of the new Short IP Training sessions, which provide flexibility to meet the future of workplaces and training needs, and remains willing to continue to support the EUIPO Academy.

More information including the registration link is available on the EUIPO website here.

Photo reproduced from EUIPO website

WIPO marked one year of eMadrid this week.

There are now 40,000 users of eMadrid, from 200 countries.

WIPO says that 75% of all existing international trademark registrations are being managed through eMadrid and users are sharing over 334,000 trade mark assets across workbenches.

Improvements implemented during the past year include faster representative changes and workbench improvements such as easier checking and updating of email addresses and enhanced filtering on workbench assets.

From October, WIPO will offer refresher webinars in seven languages exploring how eMadrid streamlines international trade mark registration management.

The webinars will cover digital transactions, smart alerts, portfolios and collaboration tools.

Dates and registration details will be published on the WIPO Madrid System webinar page.

WIPO is also inviting users to join its Madrid System user group to shape the future of the digital services available under eMadrid. You can sign up here.

More information is on WIPO’s website here.

From 1 October 2026, Madrid e-Filing will be the sole platform for filing new outbound international trademark applications based on US applications and registrations.

Until 30 September, there is a transitional period during which US applicants can use either Madrid e-Filing or the USPTO’s Trademark Electronic Application System International (TEASi).

Madrid e-Filing enables international trademark registration applicants to file online, communicate directly with the office of origin, and receive and respond to irregularity notices issued by WIPO. The service is designed to save time and reduce the risk of filing errors.

Use of Madrid e-Filing requires a WIPO account.

More information on how to file through Madrid e-Filing and the key changes is available on WIPO’s website here, along with links to further resources.

WIPO is also planning live demonstrations in September: details will be available in due course on the Madrid System webinar page.

Nick Wood of the MARQUES Cyberspace Team looks ahead to Workshop 4 at this year’s Annual Conference, titled “Improving the UDRP”.

The UDRP is arguably ICANN’s most successful consensus policy. Since its launch in late 1999, over 140,000 cases have been filed by rights owners at WIPO and FORUM. The UDRP is praised for giving rights owners a low-cost mechanism for recovering an infringing domain name. It is effective across borders, with a predictable process and reasonable timelines. It keeps infringers out of court too.

However, there is a belief that everything can be improved. ICANN announced five years ago that the UDRP needed to be reviewed, as it periodically reviews all of its consensus policies. This was greeted with anxiety by rights owners who feared unnecessary changes.

At the time Brian Beckham, Head of the Internet Dispute Resolution Section at WIPO said: “Any recommendations should be borne out by a demonstrated compelling need for a change. Any perceived case-specific or anecdotal faults of the UDRP do not warrant a wholesale revision of this industry best practice."

Project Team

In late 2024, WIPO teamed up with the Internet Commerce Association, which represents domainers who make their living by monetising domains, to look at non-contentious ways the UDRP could be improved.

This was a private initiative, outside the auspices of ICANN, featuring a Project Team made up of experts on the UDRP who regularly sit as panellists or assist complainants or defendants. ICANN Board Member Sarah Deutsch joined as an official ICANN liaison. Several members of the MARQUES Cyberspace Team including Georges Nahitchevansky and Luca Barbero participated.

The Project Team looked at 24 topics, which they divided into four categories from Tier One – Recommendations with Unanimous Support, Likely to Achieve Consensus and Readily Implementable to Tier Four – Unanimity of the Project Team to Maintain the Status Quo.

An example of a Tier One recommendation with universal support is the need for an Appeals Process. A Tier Four recommendation, was for Loser Pays which was seen as too controversial and hard to implement.

Published in April 2025, the report of the Project Team was sent to the ICANN Board in the hope that its Consensus Findings, coming from a representative mix of stakeholders, could be adopted, thus nullifying the need for a lengthy and contentious ICANN Review.

A year on and the formal ICANN UDRP Review is no closer. The good work of the Project Team sits largely on the back burner.

Aims of the workshop

At the Annual Conference next month the MARQUES Cyberspace Team is running a Workshop to scrutinise the recommendations of the Project Team, hoping to stir the embers back into life.

The Review will be introduced by Gonzalo Navarro from the WIPO Domain Dispute Center. Small groups will discuss and prioritise the recommendations and present their views back to the room, where ICANN’s Mary Wong, VP of Strategic Policy Management, will be an informed observer.

Following the workshop, the Cyberspace Team intends to write to the ICANN Board asking for the recommendations it supports to be implemented as soon as possible.

If you want to inform policy which can improve the UDRP, debating with experts issues such as whether “a small subsidy drawn from domain registration fees should go towards the UDRP in some fashion”, the Workshop is the place to be.

Nick Wood is Director, Com Laude, Markmonitor Group and a member of the MARQUES Cyberspace Team

All of the workshops at this year’s MARQUES Annual Conference take place on Thursday afternoon. There are six workshops in total, five of which are presented twice – enabling you to attend two different workshops during the afternoon

The Finnish Supreme Court has ruled on an important question concerning whether the proprietor of a registered trade mark can prohibit the use of an unregistered trade mark, even though both marks had been used for identical goods, for salmiakki candies, in parallel for decades.

Jukka Palm and Marianna Karjanlahti-Perini summarise the case.

The first instance decision

The case concerned the trade mark DRACULA. Lunapark (Company A) obtained a trade mark registration for DRACULA on 14 August 2009 covering (among other things) confectionery. It used the mark in the importation and sale of confectionery in Finland.

Karkkimies Oy (Candyman) (Company X) and its predecessors had imported and sold confectionery in Finland using Dracula identifiers on and off since the 1980s. Hardeco (company B) purchased company X’s business in 2019 and continued the activity.

When company A sought an injunction to prevent company B from continuing the trade mark infringement in 2020, company B argued that because company A had not prohibited company X from using the Dracula identifiers in its business, through its passivity, it had lost the right to bring claims against company B.  

In a decision in 2022, the Finnish Market Court agreed. It held that company B’s conduct in principle fell within company A’s right to prohibit, despite the longstanding concurrent use. Nevertheless, the claim was dismissed because company A had lost the right to invoke infringement under Finnish national law due to its passivity under which an action must be brought within a reasonable time from when the rightsholder has obtained, or ought to have obtained, knowledge of the infringement.

Company A appealed to the Supreme Court. It argued that its passivity towards Company X should not be interpreted as passivity towards the new owner company B.

CJEU ruling

The Finnish Supreme Court requested a preliminary ruling from the CJEU on whether the substance of the rights conferred by a trade mark, including permitted use and its consequences, is harmonised to the extent that a trade mark owner could lose the right to prohibit use by reason of passivity only in situations covered by Article 18(1) and Article 9(1) or (2) of the Trade Marks Directive.

In its judgment on 1 August 2025 (Case C-452/24), the CJEU held that the Trademark Directive (notably Articles 10 and 18) is fully harmonising in this respect, and a Member State may not apply a general national principle that leads to loss of trade mark rights in situations other than those expressly provided for in the directive, such as statutory acquiescence.

In other words, mere “exceeding a reasonable time” cannot extinguish the right to bring an action. The matter was considered so clear in this respect that an Advocate General’s opinion was not issued.

Supreme Court

Following the CJEU ruling (KKO:2026:30), the Supreme Court found that under Union law mere passivity cannot result in loss of trade mark rights, stating:

The Court of Justice’s preliminary ruling implies that A cannot be regarded as having lost, solely by reason of its passivity, the right to prohibit B from using the Dracula identifiers. Accordingly, the Market Court should not have dismissed the claim on the ground that A had, through its passivity, lost the right to assert claims based on its trade mark exclusive rights.

It further noted: “The Supreme Court is not seized of other grounds on which B has asserted that the matter does not amount to an infringement of A’s trade mark rights.” Consequently, B was prohibited from using the disputed trade marks for confectionery, and the case was remitted to the Market Court.

This decision confirms that the national “bring the action within a reasonable time” principle, rather heavily relied on at least in Finland, cannot be used to circumvent the exhaustive principles provided in the directive.

The case further illustrates the importance of registering key trade marks and the risks of relying on unregistered signs, even if they have been used for many years.

Marianna Karjanlahti-Perini is a European trade mark attorney and Jukka Palm is a partner and attorney with Berggren. Marianna is also a member of the MARQUES European Trade Mark Law and Practice Team.