Cross-border IP infringement: European perspectives on foreign use of IP rights online

The core challenge for rightsholders is that IP rights are territorial: a trade mark proprietor only has protection against unauthorised use in the territories where it is registered, while websites can be viewed by consumers globally.

Osborne Clarke's guide to cross-border IP infringement considers how different European jurisdictions approach this tension, focusing principally on trade marks and copyright. It reveals a divergence in approach between European countries when establishing cross-border IP infringement.

The legal framework in the EU for addressing cross-border jurisdiction in IP infringement claims is guided by the recast Brussels Regulation. In the case of torts, such as trade mark and copyright infringement, Article 7(2) stipulates that jurisdiction can be established based on either the place where the damage occurred (locus damni) or the place where the event giving rise to the damage took place (locus delicti). For the purposes of cross-border infringement actions, much of the case law focuses on establishing the locus damni, as this allows a party to claim infringement regardless of the physical location of the defendant entity.

This jurisprudence is relevant to EU Member States and has continuing relevance to the UK as assimilated case law. However, there could be divergence in the UK in future given that the supremacy of EU law has been abolished.

Despite overarching principles arising from EU jurisprudence, various European jurisdictions take different approaches to considering whether there has been IP infringement in cross-border cases. While there are some common themes, some jurisdictions take a stricter approach to establishing jurisdiction and finding infringement, which should be noted by businesses selling to European jurisdictions from foreign websites.

Targeting or accessibility?

The practical implications of these divergences are important. Some countries (UK, Germany, Poland and Spain) require specific targeting of their jurisdiction by the infringing party, while other countries have adopted the lower "accessibility" threshold.

In Belgium, for example, courts have made the accessibility criterion predominant, meaning a Belgian court can be validly seised as soon as allegedly infringing goods are accessible from Belgium. It is sufficient for a website simply to be viewable there. Similarly, French courts have upheld the "accessibility" criterion, with settled case law confirming that "targeting" is not necessary for alleged infringing actions to fall within French courts' jurisdiction.

By contrast, in Germany, the mere accessibility of allegedly infringing content is not sufficient in itself. Courts require a "commercial effect" in Germany, determined through an overall balancing of interests. Spain follows a similar approach, with courts rejecting a broad "accessibility" test and instead requiring a genuine territorial link before asserting jurisdiction and finding infringement.

The UK Supreme Court recently confirmed in Lifestyle Equities v Amazon that targeting is required to establish both the jurisdiction of the courts and infringement. In a trade mark context, targeting must be judged from the perspective of the average consumer, considering the website as a whole and the consumer's journey through the buying process.

Reducing exposure

The guide identifies the signals courts look for when deciding whether a foreign website comes under a local court's jurisdiction and whether there has been infringement of local IP rights. It highlights where an accessibility-only approach may catch activity that was not intended to be local, illustrating where risk may arise and what steps may reduce exposure.

For businesses, this means thinking carefully about managing their online presence: avoiding advertising in local currencies and languages, disabling shipping to certain jurisdictions, and considering geo-blocking to avoid inadvertently targeting markets. However, even these measures may not be sufficient to prevent infringement findings in jurisdictions such as Belgium.

Country-by-country analysis

For rightsholders, careful consideration must be given to litigation strategy when pursuing cross-jurisdictional enforcement campaigns. It is crucial to consult with local experts in different countries to ensure that the local courts have jurisdiction over the matter and whether there is a sufficient basis to establish infringement in the jurisdiction.

Osborne Clarke's guide provides country-by-country analysis covering Belgium, France, Germany, Italy, Poland, Spain and the United Kingdom, making it a practical reference tool for businesses operating online across European markets.

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