Walton International v Verweij Fashion: GIORDANO trademarks revoked, passing off claim fails
Walton InternationalvVerweij Fashion
- Court
- High Court
- Judgment
- 28 June 2018
- Citation
- [2018] EWHC 1608 (Ch)
Owning a trademark registration isn't enough if you don't actually sell under it in that territory.
A clothing group based outside the UK sued a menswear company over the GIORDANO name, but lost most of its UK and EU trademarks for non-use. The company, which had used GIORDANO in Europe since 1989, won on passing off instead.
What happened
Two companies in the Giordano Group, a clothing retailer based outside the UK, held UK and EU trademark registrations for GIORDANO dating from the 1990s and 2000s. They sued Verweij Fashion BV, a company that had sold menswear under the GIORDANO name in Europe since 1989, for trademark infringement. Verweij Fashion fought back, arguing the Giordano Group's marks were wrongly maintained for non-use and were invalid, and counterclaimed for passing off. The Giordano Group's case relied heavily on sales made through a global e-shop and an AliExpress store, rather than any established shops or targeted marketing in the UK or EU.
What did the court decide in Walton International v Verweij Fashion?
The court found that the Giordano Group's online sales, while reaching some EU consumers, were not the result of advertising targeted at the UK or EU. Customers had sought the products out rather than being marketed to, what the judge treated as sales being "pulled" rather than "pushed". That meant genuine use was not established for most of the registrations, so they were revoked. One UK mark survived the non-use challenge but was found invalid anyway, because Verweij Fashion had already built up goodwill in GIORDANO for clothing in the UK before that mark was even applied for. The court also ruled that, even if the marks had survived, honest concurrent use by Verweij Fashion would have defeated the infringement claim. Verweij Fashion succeeded on its passing off counterclaim.
What we learned from this
- What I'd take from this is that a trademark registration only protects a name, logo or tagline if the owner is actually using it in that market. Sitting on a registration while trading somewhere else leaves it open to being cancelled.
- If you sell online and customers from a country find your products, that doesn't necessarily count as using your trademark in that country. The court looked at whether sales were actively targeted there, not just technically accessible.
- A long-standing local business that has built up a reputation under a name can beat an incoming trademark owner, even one with an older registration, if the local business got there first in that market.
- Honest concurrent use, where two businesses have genuinely and separately built up a name in different markets over years, can be a complete defence to an infringement claim.
Things to be aware of
- This case turned on online sales evidence; the line between 'targeted' and merely 'accessible' online sales can be difficult to predict in advance.
- Honest concurrent use is a fact-specific defence built on years of genuine parallel trading; it won't help a business that only recently adopted a similar name.
- Revocation for non-use applies mark by mark and market by market, so a business can lose protection in one territory while keeping it elsewhere.
The businesses involved
Walton International Ltd
Part of the Giordano Group, a clothing retailer based outside the UK. Its UK entity, Walton International UK Limited, was incorporated in London in July 2015, remains active, and is recorded as a real estate agency rather than a clothing retailer. It held the GIORDANO trademarks at issue but had no established UK or EU retail presence.
- Companies House
- 09679992 Active
- Incorporated
- July 2015
- Registered office
- London
- Business activity
- Real estate agencies
- UK trademarks
- 0
Verweij Fashion BV
A clothing company that had used the GIORDANO name for menswear across Europe since 1989, described in press coverage as a small family business.
- Note
- Registered outside the UK
What happened next
- In 2018, following the judgment, the claimants served a notice of discontinuance in relation to part of the proceedings.Source: D Young & Co, July 2018
- A legal commentary on revocation for non-use noted that Walton International had originally registered the disputed GIORDANO marks, and highlighted how the ruling protects long-standing genuine users of a name against later-registered rights.Source: Hernandez Marti
What others said about it
- lawprof.co's Will Chen flagged the key point that an international website alone, accessible everywhere, does not automatically count as genuine use in any one territory.Source: Lawprof
- The UK Intellectual Property Office later cited the case's summary of the law on genuine use as authority in a separate inter partes decision.Source: Ipo
- CITMA Review noted the judgment's value in summarising CJEU and domestic case law on when online sales count as 'targeting' a particular market.Source: Citma
- Expansión reported the human dimension of the dispute, describing Verweij Fashion as a small family business facing a large retail group based outside the UK over the same name.Source: Expansión, November 2018
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This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2018] EWHC 1608 (Ch) on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 26 October 2026. Report an error.
