Emmanuel Gillet

Counterfeiting

BMW v. Premier Alloy Wheels (UK): breach of settlement agreement purported to stop intellectual property infringement

In 2012, BMW accused DGT Wheels and Tyres Ltd of selling counterfeit alloy wheels; the dispute was settled in 2014, DGT undertaking to cease the infringement. A search order obtained in 2018 revealed that DGT had resumed selling counterfeit wheels sourced from China, notably on eBay, and stored by Premier Alloy Wheels Ltd. BMW sued both companies before the High Court of England and Wales. Comparing the number and shape of the spokes, the shape of the central structure and various differences in the rim designs, the judge held that the wheels were counterfeit and found the defendants liable ([2020] EWHC 2094 (Pat)). The judgment illustrates a common phenomenon: settlement agreements intended to put an end to infringement are regularly breached. Trademark and design owners should therefore keep previously identified infringers under continuous surveillance, especially those who have given undertakings not to repeat their conduct.

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Counterfeiting

Fendi v Rolo Fashion: Assessing Damages When Counterfeit Sales Do Not Translate into Lost Sales

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Counterfeiting · Court Litigation · Marketplace Enforcement · Trademark Law
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Counterfeiting

When the Lion Saves the Panther from Counterfeiting: Anatomy of a Fraudulent Online Store and the Evolution of Cybersquatting

Cybersquatting is no longer limited to the opportunistic registration of a domain name. In WIPO Case No. D2026-1806, Metro-Goldwyn-Mayer Studios obtained the transfer of pinkpanthershop.com, a domain operating a fully-fledged fraudulent online store built around the Pink Panther brand: polished visual identity, seamless purchasing journey, legal notices and a false sense of legitimacy. This article dissects the anatomy of such fraudulent ecosystems and the technical and legal indicators that reveal them, from warehouse locations to privacy shields. It also revisits the role of disclaimers in UDRP proceedings — including the Oki Data criteria — and shows why bad faith must be assessed in context. A telling illustration of how online brand protection has shifted from defending names to dismantling infrastructures.

Counterfeiting · Cybersquatting · UDRP
22 July 2026
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Third-Party Liability

Lacoste v Shein: When a Platform Can No Longer Hide Behind Hosting Status

A platform is not one legal object. In Lacoste v Roadget Business Pte. Ltd. and Infinite Styles Services Co. Ltd. (Paris, Pôle 5 ch. 1, 8 July 2026, RG 25/12454), the Court of Appeal refused to let the operators of shein.com shelter behind the hosting exemption of Article 6 of the Digital Services Act: goods “sold by Shein”, Shein labels and packaging, and the Commission’s designation of the service as a very large online platform revealed a hybrid activity, and the characterisation attached not to the platform as a whole but to the role actually played in the disputed transactions. The judgment reaches beyond the twenty offending products. “Lacoste”, typed into the internal search engine, infringes the word marks; “crocodile”, a free word, grounds unfair competition and parasitism. Interim damages rise from €30,000 to €300,000 — the defendants’ own failure to disclose their turnover counting against them — and the measures run across the European Union.

Counterfeiting · Court Litigation · European Digital Law · Marketplace Enforcement · Trademark Law
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Domain Name Law

COSHIELD: The Scope of the UDRP in Trademark Disputes

Not every dispute involving a trade mark and a domain name amounts to cybersquatting. In Polyco Healthline Limited v. David Beatson (WIPO Case No. D2026-1893), the panelist denied the complaint brought against coshield.com, a domain used since 2020 to sell personal protective equipment in the very sector where the complainant has exploited its SHIELD trade mark since 1997, and despite a settlement agreement concluded between the parties in 2021. The decision turns on the moment of acquisition: created in 2014, the domain name appears to have changed hands in May 2020, at the outset of the COVID-19 pandemic, and the combination of “Co” and “Shield” could describe the business rather than target Polyco. The evidence being “finely balanced”, bad faith was not established. This article examines why trade mark infringement and cybersquatting are two paths that do not necessarily converge.

Cybersquatting · Domain Name Law · Trademark Law · UDRP
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Article Information

Author

Emmanuel Gillet

Publication Date

11 September 2020

Jurisdiction

United Kingdom

Topics

Counterfeiting · Court Litigation · Design Law

Industry

Automotive

Related Decision(s)

[2020] EWHC 2094 (Pat)High Court of England and Wales (Patents Court)BMW v. DGT Wheels and Tyres Ltd and Premier Alloy Wheels Ltd
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