Patterns of Protection: IP case law update for fashion brands

GymBull refused: UKIPO finds bad faith despite no likelihood of confusion

Gymshark Limited v Abdulwahed Bin Shabib Distribution, UK Trade Mark Application No. 4091284 (O/0469/26)

The UKIPO has refused registration of GymBull for clothing, despite finding that consumers were unlikely to confuse it with the well-known GYMSHARK brand.

Gymshark opposed the GymBull figurative mark, covering Class 25 clothing, on the basis of several earlier rights, including its registered GYMSHARK word marks.

Although the goods were largely identical, Gymshark’s claim that there would be a likelihood of confusion failed. The shared “Gym” element was insufficient to offset the differences created by replacing “Shark” with “Bull” and adding a distinctive bull device. The UKIPO held that, even allowing for Gymshark’s enhanced distinctiveness and strong UK reputation, consumers would not believe that GymBull and GYMSHARK originated from the same or economically linked undertakings.

Gymshark nevertheless succeeded in its claim that the GymBull mark would injure the reputation of the GYMSHARK brand for many of the clothing goods applied for. The Hearing Officer accepted that Gymshark had a substantial UK reputation, supported by significant sales, social media activity, influencer collaborations and retail expansion, with UK turnover exceeding £136 million by 2024. While consumers were not expected to confuse the marks, the UKIPO considered that many would make a link between them when encountering GymBull on sportswear. GymBull would benefit from Gymshark’s familiarity, attraction and commercial appeal, particularly its image as a contemporary, fitness-focused label with strong resonance among younger consumers.

Gymshark’s most successful claim was bad faith, which ultimately led to refusal of the application in full.

Gymshark showed that the applicant had filed numerous trade mark applications appearing to imitate or evoke established third-party brands, including Calvin Klein, Armani, Under Armour and The North Face. Many had already faced opposition. The Hearing Officer treated this broader filing pattern as highly relevant and found that GymBull formed part of a strategy of seeking registrations for marks that called famous brands to mind.

The applicant offered no credible explanation for adopting GymBull or for its intended use. Its argument that the marks formed a series of parody brands was rejected: there was nothing inherently humorous, satirical or parodic about the application and little evidence to support that characterisation.

The UKIPO also considered that the combination of GymBull and the bull device was likely to bring both Gymshark and Red Bull to mind, and that this was unlikely to be coincidental given the applicant’s history of lookalike filings. The application was held to be part of a broader pattern of conduct designed to imitate established brands, amounting to bad faith and an abuse of the trade mark registration system.

Key takeaways

For brand owners, the decision is a reminder that bad faith can be a powerful basis for opposition where an applicant appears to be pursuing a pattern of filings that mimic established brands. Even absent confusion, evidence of a wider strategy of imitation may be enough to defeat an application.

The case also underlines the importance for applicants of providing a credible commercial explanation when faced with bad faith allegations. Once an opponent establishes a prima facie case, failure to justify the filing strategy can lead to adverse inferences.

Finally, the decision reinforces the value of reputation-based claims: well-known brands may be able to prevent later marks from benefiting from their attraction, image and commercial pull, even where traditional confusion-based grounds fail. GymBull illustrates how bad faith and reputation claims can work together to protect valuable goodwill against applications that seek to ride on the coattails of established trade marks.

Crocs design invalidated: General court confirms lack of individual character

General Court, 22 April 2026, Case T 228/25

The General Court of the European Union confirmed that the registered design filed in 2004 to protect the Crocs clog lacked the individual character required under Regulation (EC) No 6/2002 because it did not produce a different overall impression from an earlier clog design disclosed in 2003. This outcome follows an invalidity action brought by Spanish company Gor Factory SA before the European Union Intellectual Property Office (“EUIPO”), based on that earlier clog design, disclosed under the name “Holey Soles”. The EUIPO found that both designs share the same general shape and an almost identical pattern of perforations and cut-outs, differing only by the occasional feature of a heel strap with side buttons in the Crocs design.

Upholding the findings of the EUIPO, the General Court confirmed that designers of clogs enjoy a high degree of creative freedom in choosing materials, colours, decorative elements, and the configuration of holes. In that context, the addition of a heel strap with side buttons was considered only a minor variation that an informed user would perceive as a simple alternative version of the earlier design rather than as a distinct creation. The Crocs design was therefore declared invalid for lack of individual character.

More details about the case here.

France’s latest decision on upcycling – a confirmation of the Paris court’s strict approach

Paris Judicial Court, 3rd ch., 1st sect., 21 May 2026, RG n° 25/00621, Chanel v SARL Kamad Reworked

Once again, the Paris Court has held that upcycling can amount to trade mark infringement. In its latest decision, Chanel successfully argued that SARL Kamad Reworked (“KR”) infringed its trade mark rights and engaged in misleading commercial practices by marketing jewellery incorporating upcycled Chanel charms and buttons bearing several Chanel trade marks, including the word mark “CHANEL” and the famous interlocking “CC” monogram. Following on from the Court’s 10 April 2025 ruling on the upcycling of Hermès scarves (our full commentary on that decision is available here), this judgment confirms the Paris Court’s strict stance on upcycling practices.

1. No exhaustion of rights in an upcycling context

The court found that, even assuming that the charms and buttons came from products initially placed on the market by Chanel or with its consent within the EEA, those branded elements had been incorporated into new composite creations combining Chanel components with elements of a different origin. The resulting items constituted “an entirely different product” which, as such, had not been put on the market by or with Chanel’s consent and therefore could not benefit from exhaustion of rights.

The court went on to find infringement based on reproduction for certain items and imitation for others and made a preliminary damages award of €75 000.

2. KR’s misleading commercial practices

As part of its business model, KR issued certificates stating that the products were made from upcycled Chanel elements and clarifying that there was no commercial collaboration with Chanel. The Court held that issuing such certificates, which gave the impression that the manufacture and marketing of these products was lawful, constituted a misleading commercial practice.

3. Conclusion

In this decision, the Paris Court adopts a strict approach to upcycling, consistent with last year’s Hermès ruling: when components bearing a trade mark are incorporated into new composite creations, the resulting products will be treated as new goods which have not been placed on the market by, or with the consent of, the trade mark owner, and the exhaustion doctrine does not apply.

Notably, the decision also shows that transparency towards consumers does not protect upcyclers from trade mark infringement claims or findings of liability.

Chinese court clarifies limits of Trademark Exhaustion in a landmark luxury upcycling case

Zhejiang High People's Court, 21 May 2025, (2024) Zhe Min Zhong 1159, Louis Vuitton v Shenzhen Bangtu Cultural Media Co., Ltd. et al.

The Zhejiang High People's Court has issued a significant ruling addressing the boundaries of trademark exhaustion in the context of the circular economy. In a decision that provides crucial guidance for the upcycling industry, the Court upheld a finding that Shenzhen Bangtu Culture Media Co., Ltd. (the "defendant") infringed Louis Vuitton's well-known trademarks by marketing handbags reconstructed from dismantled luxury bags. This judgment confirms a strict approach to the substantive alteration of branded goods, aligning with the principle that once a product bearing a trademark has been fundamentally changed, the exhaustion of rights doctrine cannot be invoked. This judgment has become final.

1. The defendant's business model and the claim

Louis Vuitton, the proprietor of several highly distinctive and well-known trademarks, brought proceedings against the defendant for trademark infringement and unfair competition. The defendant operated a business model under the brand "Shapeshift land", which centred on deconstruction of pre-owned luxury bags into raw materials and their subsequent reconstruction into new handbag designs. The defendant sold these products online and in physical stores. LV challenged 15 specific handbag models, all of which bore signs identical or similar to its registered trademarks prominently on their front. Certain product listings also featured descriptions such as "REMAKE HANDBAGS LOUIS VUITTON". LV sought an injunction, RMB 5 million in damages, RMB 400,000 in costs, and a public clarification to eliminate the adverse effects of the infringement.

The Hangzhou Intermediate People‘s Court found in favour of Louis Vuitton on the infringement claims and ordered the defendant to cease the infringing acts, publish a corrective statement, and pay damages in the amount of RMB 1,050,000 (including reasonable costs). The judgment was affirmed by the Zhejiang High People’s Court in its second-instance judgment (2024) Zhe Min Zhong 1159.

2. The defendant's defence of Trademark Exhaustion fails

The core of the defendant's defence rested on the principle of trademark exhaustion. This principle provides that once goods are placed on the market by the trademark proprietor or with its consent, the proprietor cannot oppose the subsequent resale of the same goods. The defendant argued that because it used authentic, pre-owned Louis Vuitton handbags as source material, it was free to resell the trade marked components in a reimagined form.

The Court definitively rejected this argument on two independent grounds. First, it noted that the defendant had failed to adduce sufficient evidence to prove that the bags it dismantled were indeed genuine goods originally placed on the market by Louis Vuitton. Second, and more critically, the Court held that even if the original bags were proven to be genuine, the exhaustion defence would still fail. The reasoning was clear: the defendant had substantively altered the shape, colour scheme, and overall appearance of the original goods by dismantling and reconstructing them. The resulting handbags were found to be entirely different products from those originally placed on the market by Louis Vuitton. By continuing to affix or retain Louis Vuitton's trademarks on these new creations — while relegating its own “Shapeshift land” mark to zipper pulls and interior linings - the defendant had destroyed the marks' essential function of guaranteeing the product's origin. The Court determined that this practice would inevitably cause a likelihood of confusion among the relevant public, who might mistakenly believe the upcycled products originated from, or were authorised by, Louis Vuitton. The exhaustion defence was therefore deemed inapplicable, and the conduct constituted trademark infringement.

3. Conclusion

This judgment delivers a clear message: a business model based on upcycling cannot legally capitalise on the reputation of luxury brands by retaining their trademarks on goods that have undergone a fundamental transformation. The defence of exhaustion applies only to the resale of goods in their unaltered state. Any substantive change that creates a "new" product resets the requirement for the trademark proprietor's consent, as the modified goods have never been placed on the market by the right holder. The ruling firmly rejects the notion that transparency alone, such as disclaiming official collaboration, can remedy the infringement of using another's mark on a reconstituted product.

4. Impacts and key takeaways

This judgment, after being issued, has caused a widespread impact in the country. Notably, this case has received a strong recognition by the Supreme People’s Court. In its Annual Report on Legal Application Issues in Intellectual Property Cases (2025) published on 21 April 2026, the Supreme People’s Court recited this case and established a clear rule:

“Where the accused infringer has substantially altered the shape, colour scheme, and overall appearance of second hand goods, but nevertheless retains and uses the trademark signs from the original goods without authorization, thereby undermining the essential function of the registered trademark in identifying the source of the goods and rendering it likely that the relevant public will be confused or mistaken as to the origin of the goods, the accused infringer’s defence of exhaustion of rights shall not be sustained.”

This pronouncement provides uniform guidance for lower courts nationwide and reaffirms that substantive alteration defeats any presumption of exhaustion.

The Chinese courts’ position resonates with the approach under EU trademark law. Article 15(2) of Regulation (EU) 2017/1001 (EUTMR) provides that exhaustion does not apply where there exist “legitimate reasons” for the proprietor to oppose further commercialisation, “especially where the condition of the goods is changed or impaired” after they have been put on the market. Similarly, Article 15(2) of Directive (EU) 2015/2436 contains an equivalent provision. The above decisions in France also reached comparable conclusions in the upcycling context. These developments indicate that the restrictive approach in China is not an isolated stance but aligns with the prevailing trend in major European jurisdictions.

For brand owners, this ruling provides a robust legal basis to challenge unauthorised upcycling activities that retain visible brand marks on substantially altered products. The decision confirms that courts are receptive to post sale confusion arguments, meaning that a likelihood of confusion need not arise only at the point of sale; it can also materialise when third parties encounter the upcycled goods in public. Moreover, the judgment aligns with the approach taken in major European jurisdictions, which facilitates the coordination of global enforcement strategies for luxury brand owners.