Trademark rights stop at the border. A UK trademark protects your name, logo or tagline in the UK, and if you sell elsewhere you usually need protection in each country or region where you trade, which is what international trademark registration is for. International trademark disputes show what happens when brands cross borders: who owns a name in which territory, what a registration abroad is worth, and which courts can hear the case.
What is an international trademark dispute?
Usually not. Three points come up again and again in these cases:
- Rights are territorial. A UK trademark covers the UK, and an EU trademark covers the EU. Using or registering a name in one place gives you nothing automatic in another.
- Being known isn't the same as trading. People in the UK knowing your name isn't enough on its own. Unregistered rights here (passing off) depend on having customers here.
- Use matters as well as registration. A registration you don't use in a territory can be taken off the register there.
The usual routes are a national application in each country, an EU trademark for the EU, or one international application under the Madrid Protocol that reaches several countries at once.
Being known here isn't the same as trading here
Starbucks v Sky
The Supreme Court ruled that a business based outside the UK could not sue for passing off here just because UK residents knew its brand. It needed actual customers in the UK. Being known in the UK isn't the same as trading here, and passing off needs trading here.
Read our summaryThomas Pink v Victoria's Secret
Thomas Pink stopped Victoria's Secret using PINK on clothing and shop signs in the UK and EU, although use alongside VICTORIA'S SECRET on in-store swing tags and Facebook escaped a finding of confusion. Using a name abroad for years gives you no automatic right to use it once you expand into the UK or EU.
Read our summaryA registration only helps where you actually trade
Walton International v Verweij Fashion
A clothing group based outside the UK had its UK and EU GIORDANO trademarks mostly revoked for non-use. It was also found liable for passing off against a rival that had used GIORDANO in Europe since 1989. Owning a registration isn't enough if you don't actually sell under it in that territory.
Read our summaryLumos Skincare v Sweet Squared
After passing off had been found in an earlier judgment, the Court of Appeal ruled that the other side's EU trademark registration could not cut down the scope of the injunction (the court order to stop), though the losing party got a short grace period to adapt its business. A later registration for the same name doesn't protect you from a passing off claim based on someone else's earlier goodwill.
Summary coming soonTorres v Mezzacorona
The Court of Appeal held that EU wine-labelling rules did not stop a brand name that resembled a place name from being registered, because there was no real risk of misleading consumers. A name that looks like a place name isn't automatically blocked if nobody is actually likely to be misled.
Summary coming soonSharing a name with a business in another country
Merck KGaA v Merck Sharp & Dohme
Two unrelated global pharmaceutical businesses sharing the Merck name fought over a decades-old coexistence agreement (a contract setting out who uses the name where). The Court of Appeal largely upheld the breach of contract findings, but sent the infringement and remedy issues back for a fresh hearing. Even a well drafted coexistence agreement needs revisiting as a business moves online and crosses old territorial lines.
Read our summaryStichting BDO v BDO Unibank
The global BDO accountancy network's trademark claim against a bank based outside the UK, over its remittance service and adverts, mostly failed. A few adverts technically infringed but were excused by the own name defence. Years of parallel trading without confusion can defeat a trademark claim, even between similarly named businesses.
Summary coming soonICE v Intelligent Cleaning Equipment
The Court of Appeal ruled that the five-year acquiescence clock (the period after which you can lose the right to challenge a rival's trademark you've tolerated) starts once you know the rival is using it, even if you don't yet know it's registered. That departed from a 2011 EU ruling, but the appeal still failed because the registration date relied on was later than claimed. If you spot a rival using a similar name, act quickly.
Read our summaryWhere can you sue?
AMS Neve v Heritage Audio
The question was whether UK courts can hear an EU trademark infringement claim against a business based outside the UK that advertises online to UK customers, or whether only the courts of the seller's home country can. The ruling was procedural, and where you can sue in that situation was not settled by this case.
Read our summaryAviator v Spribe
In a cross-border copyright dispute over a gambling game logo, the Court of Appeal ruled that whether an earlier judgment from a court abroad stops the same issue being argued again (an issue estoppel) is decided by the law of the court hearing the case here, not by the overseas copyright law that would otherwise apply. If you win a relevant case abroad, procedural law here decides whether it binds your opponent here.
Read our summaryWhat I’d take from these international trademark disputes
- 1What I'd take from this is that a trademark is a local right. It's usually worth registering where you trade, or plan to, before you get there.
- 2Fame travels faster than rights. Being known in the UK doesn't stand in for UK customers or a UK registration.
- 3Registration without use is fragile. If you don't sell under the mark in a territory, you can lose it there.
- 4If you share a name with a business elsewhere, put the deal in writing and revisit it as you grow online.
- 5Where you can sue is a question in its own right, and the answer isn't always settled.
If you sell, or plan to sell, outside the UK, international trademark registration extends your protection to the countries that matter to you, often through a single application, and EU trademark registration covers the EU in one filing. A trademark search and a trademark clearance audit show whether your name is free in the places you want to trade. And if you haven't yet, start at home: register a trademark in the UK first.
Book a free call, email enquiries@thetrademarkhelpline.com or ring 0161 833 5400.
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This page is for information purposes only and does not constitute trademark advice or guidance. Case summaries are drawn from published UK judgments; summaries drafted with AI assistance and checked by The Trademark Helpline (how we write these). Last reviewed 30 October 2026.
