Cross-border trademark infringement is when a name, logo or tagline crosses a national border on its way to a dispute: a website run from abroad selling into the UK, genuine goods moved from one market to another, or two businesses sharing a name in different countries. Trademarks are territorial, so the question is usually whether what happened counts as happening here. These cases show how the UK courts have answered that, and why international trademark registration matters once your brand travels.
What is cross-border trademark infringement?
In simple terms, the cases below fall into four situations:
- A business based abroad selling to the UK. A website run from outside the UK can still infringe a UK trademark if it's aimed at UK customers.
- A reputation without UK customers. Passing off protects goodwill, which is the commercial value of your reputation with actual customers. Being known in the UK isn't enough on its own.
- Genuine goods crossing borders. Parallel importers buy genuine branded goods in one market and resell them in another. Whether the trademark owner can stop them depends on whether it consented and how the goods were handled.
- The same name in different countries. Unrelated businesses can hold the same name in different places, and disputes between them can run in several countries at once.
When does a business based abroad infringe in the UK?
Lifestyle Equities v Amazon
Amazon infringed Lifestyle's trademarks because its amazon.com website was found, on the facts, to be deliberately targeting UK and EU shoppers with goods bearing marks identical to Lifestyle's registered trademarks. A website based outside the UK can still infringe here if it's clearly aimed at UK customers.
Read our summaryArgos v Argos Systems
A software business based outside the UK earned advertising income from UK visitors who reached its similarly named website by mistake. The court found the site targeted the UK and created the necessary link with the Argos mark, but no unfair advantage had been taken. Profiting from a rival's misdirected customers isn't automatically infringement if you didn't go looking for the traffic.
Read our summaryEli Lilly v 8PM Chemist
Genuine Lilly-branded medicines were shipped from outside the EU through a UK pharmacy under a customs suspension scheme, to be posted on to patients outside the EU. They did not infringe Lilly's EU trademarks, because the goods never entered free circulation in the EU. Goods that pass through without being released onto the market generally sit outside infringement.
Summary coming soonKnown here isn't the same as trading here
Starbucks v Sky
A business based outside the UK can't sue for passing off here just because people in the UK know its brand. It needs actual customers in the UK. Reputation travels further than goodwill does.
Read our summaryStarbucks v Sky
In the earlier appeal, the TV business's NOW trademark was held invalid because it described the instant, on-demand nature of its service. Free viewing of its programmes by people in the UK did not create UK goodwill for a passing off claim against Sky's NOW TV. An online audience isn't the same as UK customers.
Summary coming soonGenuine goods crossing borders: parallel imports
Oracle v M-Tech Data
A trademark owner's right to stop genuine goods being put on the market in the EEA for the first time without its consent was not affected by EU free movement or competition law, even if its separate conduct elsewhere might unlawfully restrict the resale market. That right is very hard to defeat with EU law arguments.
Read our summaryRoche v Kent Pharmaceuticals
Summary judgment, a decision without a full trial, was confirmed against a parallel importer. A CE mark shows regulatory compliance; it doesn't by itself show the trademark owner agreed to the goods being sold in the EU.
Summary coming soonDoncaster Pharmaceuticals v Bolton Pharmaceutical
Summary judgment against parallel importers of a medicine was overturned, because their defence that the trademark owner's rights were already used up needed a full trial. Fact-heavy defences of this kind are rarely suitable for a quick win.
Summary coming soonBoehringer Ingelheim v Swingward
Parallel importers who rebox or relabel branded medicines don't infringe unless actual damage to the brand's reputation is proved as a fact, not just assumed. Objecting to repackaging on principle isn't enough.
Summary coming soonHollister v Medik
A parallel importer that failed to give the trademark owners the notice required before selling had to hand over its full net profits, with no proportionate discount and no deduction for general overheads it couldn't link to the infringement. Skipping that step can cost all the profit.
Summary coming soonSportswear v Stonestyle
It was arguable that a brand owner's anti-competitive distribution agreement could undermine its ability to stop genuine goods being resold after batch codes were removed. How you set up your distribution can affect how well you can enforce your trademark.
Summary coming soonSame name, different countries
Merck v Merck Sharp & Dohme
Two unrelated global businesses sharing the Merck name fought over a coexistence agreement that was decades old. The Court of Appeal largely upheld the breach of contract findings and sent the infringement and remedy issues back for a fresh hearing. Old territorial deals often need revisiting once a business trades online.
Read our summaryPrudential v Prudential
Two unrelated businesses shared the Prudential name. A trademark infringement claim over the use of PRUMERICA in Europe was allowed to go ahead despite the other side's successful trademark registration in France, because the EU rules on conflicting proceedings did not apply. Winning in one country doesn't automatically settle a separate dispute in another.
Summary coming soonL'Oreal v Bellure
In a case about smell-alike perfumes, the Court of Appeal rejected passing off and a general unfair competition claim, but referred the core trademark questions on comparison lists and unfair advantage to the ECJ, the EU's top court. Some cross-border questions have needed an answer from outside the UK system.
Summary coming soonWhat I’d take from these cross-border trademark cases
- 1What I'd take from this is that where a business is based matters less than who it's aimed at. A website run from abroad and targeting UK customers can infringe here.
- 2Being well known in the UK isn't the same as having UK customers. Without them, passing off usually won't help you.
- 3Genuine goods aren't automatically fair game. Consent, notice and how the goods are handled all count, and a brand owner's own distribution terms can count against it.
- 4A registration in one country rarely settles things in another. If you share a name with a business abroad, the agreement between you and where each of you is registered both matter.
- 5Protection follows the register, country by country, so it's worth registering where you actually trade.
If your brand is heading abroad, international trademark registration covers the countries you trade in, and EU trademark registration covers the EU in one filing. A trademark search shows who already holds your name in those markets. If someone based abroad is using a name or logo too close to yours to sell into the UK, a cease and desist letter is usually the first step, and trademark monitoring tells you when someone files for something close.
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.
