Patterns of Protection: IP case law update for fashion brands

Counterfeit luxury goods: User principle damages applied in fashion trade mark case

In Fendi Italia SRL & Ors v Rolo Fashion Ltd & Anor [2026] EWHC 1703 (IPEC), the Intellectual Property Enterprise Court considered how damages should be assessed following the sale of counterfeit luxury fashion products bearing the FENDI, LOEWE, DIOR and CELINE trade marks. The defendants had previously been found liable for infringement after selling counterfeit goods online.

At the inquiry as to damages, the claimants sought compensation for lost sales, damage to brand reputation and, alternatively, a reasonable royalty under the "user principle". A key issue was the extent of the defendants' infringing activity, particularly given concerns regarding the completeness of the defendants' disclosure. The Court rejected elements of both parties' methodologies for calculating losses and instead adopted a pragmatic approach, estimating that 15% of the defendants' sales represented sales diverted from the claimants. This resulted in an award of £200,000 for lost profits.

The Court also confirmed that user principle damages may be available in trade mark infringement cases, even where the proprietor would never actually have licensed the infringer. Judge Hacon held that, even where counterfeit sales did not directly replace sales of genuine products, the defendants had still obtained value through the unauthorised use of the claimants' well-known brands. Drawing on the same reasoning used in patent cases, the Court treated the claimants and defendants as a notional willing licensor and licensee. In the absence of evidence as to an appropriate royalty rate, the Court assessed a notional royalty of 3% of the defendants' average selling price and awarded a further £13,000, bringing the total damages awarded to £213,000.

However, the claimants were unsuccessful in securing damages for reputational harm. The Court found insufficient evidence that consumers believed they were purchasing genuine products or that the trade marks had suffered measurable dilution or tarnishment as a result of the defendants' activities.

Key takeaways

This decision provides several important lessons for luxury fashion brands and other trade mark owners:

• Courts remain willing to estimate damages where infringers fail to provide complete disclosure, and speculative assumptions will not be accepted simply because infringement has been established.
• User principle damages may be available in trade mark infringement proceedings where infringing sales do not directly substitute genuine sales, even if the brand owner would never actually have licensed the infringer.
• Brand owners seeking compensation for reputational harm must produce clear evidence of damage rather than relying on general assertions regarding dilution or tarnishment.
• Deliberate counterfeiting will not automatically justify an enhanced award under Regulation 3 unless additional prejudice or unfair profit can be properly demonstrated.

The decision is a useful reminder that courts will attempt to compensate trade mark owners even where evidence of loss is imperfect, while also demonstrating the continuing scope for user principle damages in appropriate trade mark infringement cases.

No two soles alike: General Court confirms high bar for challenging design individual character

General Court, Puma SE v EUIPO, Case T-376/25, 2 September 2026

Key takeaways

• A shared "eye-catching" feature (here, a pebble-like midsole) does not by itself create the same overall impression if other elements differ.
• Creating a market trend does not entitle a rights holder to broader protection than the registration itself confers: following the Deity Shoes decision (see our full comment here), the General Court confirms that trends do not restrict designers’ freedom.

Background

Sir Safety System SpA held an international design registration designating the EU for a footwear sole. Puma sought a declaration of invalidity, arguing the design lacked novelty and individual character in light of a number of its own earlier designs and marketed shoe models featuring a similar "pebble-like" particle midsole. Both the EUIPO Invalidity Division and the Board of Appeal rejected Puma's challenge, finding that the contested design produced a different overall impression on the informed user. Puma appealed to the General Court, which has now dismissed the action in full.

What the Court decided

The Court confirmed each stage of the Board's individual-character analysis under Article 6(1) of Regulation No 6/2002 (in its version prior to Regulation (EU) 2024/2822).

• Relevant sector: defined by reference to the registration's own indication ("footwear sole" generally), not by the specific commercial use alleged by the intervener (safety and working shoes).
• Informed user: a footwear purchaser with a relatively high level of attention, capable of making a direct comparison between products. The General Court stressed that the informed user is not to be confused with the average trade-mark consumer who compares from imperfect recollection, but a user who may also make direct comparisons of the designs at issue.
• Designer's freedom: high, notwithstanding functional constraints (grip, durability, comfort). In the wake of the CJEU Deity Shoes decision, the General Court rejected Puma's argument that it had "exhausted" that freedom by pioneering the pebble-textured midsole and was therefore entitled to a broader protection: creating a design trend affects aesthetic or commercial appeal, not the individual-character test, and cannot expand statutory protection.
• Overall impression: while the contested design and Puma's earlier designs shared a particle-textured midsole, the Court found this feature did not dominate the overall impression, particularly once other views (sole underside, front, back) were considered.
• Disclaimed features: elements shown in broken lines in earlier designs remain part of the relevant prior art comparison where they were disclosed clearly and precisely alongside the protected features. This is a clear reminder that disclosure, not the scope of protection, is what matters when assessing the individual character of a design.

Why it matters

This judgment is a useful reminder that a single striking design feature may not be enough to secure invalidity (or, conversely, to establish infringement) if the remainder of the design differs. Rights holders relying on a distinctive signature element to challenge competitor designs should be prepared to show that the feature genuinely dominates the overall visual impression, across all relevant views of the product, not just the most flattering angle.

The decision also confirms that first-mover status in creating a design trend brings no legal premium under the individual-character test.

Medusa in the mirror: Chinese Court rejects design patent defence in fashion trade mark case

What happened

In a high-profile trade mark dispute involving a Chinese menswear brand, the Zhuhai Xiangzhou District People’s Court found that four companies had infringed Versace’s registered Medusa head device marks by using a similar female head logo on clothing sold through the “Medusa Flagship Store” on Tmall.

Versace brought proceedings in 2025 against Putian Youkou Trading Co. Ltd and three affiliated companies involved in production, distribution and online sales. The defendants operated a Tmall store with around 13,000 followers and sold menswear bearing a prominent circular female head logo, which Versace alleged was confusingly similar to its registered Medusa head trade marks.

What the Court decided

On 31 March 2026, the court held that the defendants’ logo and Versace’s registered marks were both simplified female head images and that the differences in hair and facial details were insufficient to avoid overall visual similarity. The court found that ordinary consumers were likely to be confused as to the source of the goods, particularly because the logo was used prominently on garments, e-commerce product images and store branding.

The court rejected three main defences:

• "Oriental woman” defence: The defendants argued that their logo depicted an “Oriental woman” with a leaf garland, whereas Versace’s Medusa was a snake-haired figure. The court focused on overall visual impression and likelihood of confusion, rather than the mythological origin of the design.
• Design patent and copyright defence: The defendants relied on an appearance design patent certificate and copyright registration. The court held that a design patent or copyright does not override another party’s earlier trade mark rights.
• Decorative use defence: The defendants contended that the logo was used only as a decorative element on clothing. The court treated the prominent placement on garments and online listings as trade mark use capable of indicating origin of the products.

The court ordered the defendants to stop producing and selling the infringing clothing, remove infringing listings and destroy remaining stock. Three Putian companies were jointly ordered to pay RMB 700,000 in damages, with one Zhuhai company bearing joint liability for RMB 100,000.

The defendant Putian Youkou Trading Co. Ltd has appealed, and the second-instance proceedings are ongoing.

Key takeaways

This first-instance decision offers several useful reminders for fashion brands operating in or sourcing from China:

• Overall visual similarity remains the key test. Chinese courts continue to assess trade mark infringement by reference to the overall impression on ordinary consumers, rather than requiring identical reproduction of a mark. Minor adjustments may not avoid a finding of confusing similarity.
• A design patent is not a shield against trade mark infringement. Holding a CNIPA design patent, copyright registration or even related word mark registrations does not authorise use of a sign that conflicts with another party’s earlier trade mark rights.
• Prominent garment graphics can constitute trade mark use. Where a graphic is displayed prominently on clothing, product images, packaging or store names, it is likely to be treated as an indicator of origin rather than mere decoration.
• Trademark clearance should cover core logos, not only word marks. Reports indicate that the defendants had registered multiple “Medusa” related word marks, but the specific head logo at issue had not been successfully registered and was reportedly still subject to refusal/review proceedings.
• Affiliated entities may face joint liability. The judgment shows that Chinese courts may hold multiple companies in a production and distribution chain jointly liable where they participate in the infringing activity. When enforcing trademark rights in China, taking action against all upstream and downstream companies in the infringement chain simultaneously may be a more effective and cost-saving approach.