In today's global marketplace, protecting your brand across borders is more complex than ever, especially when it comes to opposition, cancellation and board procedures. By leveraging local expertise and cutting-edge technology, you can power your global brand protection strategy, as Aaron Wood explains.
The legal landscape in Europe is evolving rapidly, with distinct differences between the UK's trademark system and the European Union's framework, for example. Add Brexit into the mix, and the challenges multiply: parallel proceedings, diverging case law and varying procedural rules make cross-border online brand protection anything but straightforward.
Brands seeking to defend their trademarks across Europe often find that a one-size-fits-all approach falls short. Understanding the nuances of each jurisdiction – from local evidentiary requirements to procedural tactics – is crucial to building a robust and effective global brand protection strategy.
Global brand protection challenges
While trademarks are inherently territorial, many brand owners operate globally and expect seamless protection. However, board proceedings highlight how local laws, court practices and even cultural approaches influence outcomes. What works in the UK might not translate well in Belgium or the Netherlands. For example, certain types of evidence or legal arguments might carry more weight in one jurisdiction over another, and procedural deadlines and hearing formats differ.
Ignoring these nuances can lead to costly delays, lost oppositions or weakened enforcement. Successful cross-border brand protection requires tailored strategies informed by local expertise – aligning these tactics with your overarching global brand protection strategy and goals.
Key differences which presently give rise to opportunities and risks between the approaches in the UK and Continental Europe (ie, outside countries with a common-law practice such as Ireland) include:
- The distinction between the relevant date for considering the validity of marks: In the UK, the position taken is that if the earlier right relied upon against a later application was valid as at the filing date of the later mark then that suffices. In the EUIPO (subject to a current appeal before the CJEU), the position is that the right must continue to exist as at the time that the decision was rendered (so that non-renewal or other limitations to the later right may be relevant to the scope of the challenge).
- Within the EUIPO it is unusual for there to be oral proceedings, and witnesses are not cross-examined on their evidence; in the UK it is always open to the parties to request that the matter be dealt with via a final oral hearing, and cross-examination may be sought.
- Within the EU tradition it is commonly the case that a party with a connection to the outcome of the case will be seen to have too much of an interest to make their evidence credible, and external supporting documents are important; in the UK it is often the case that the best witness will be a party with an interest in the case (as they know the facts first-hand) and cross-examination and other kinds of challenges deal with the issue of credibility.
When these differences are placed alongside each other and the timelines interact favourably, this means that a party can challenge evidence using the UK procedures and really explore the issues orally in a way which is not possible in the context of EU proceedings. Although the EU jurisdictions are not bound by the UK decisions, very often the greater scrutiny which is placed on the evidence in the UK allows the EU decision maker to be more satisfied about any outcome they wish to reach (or any concerns about the evidence).
Five takeaways for cross-border success
- 1. Understand local procedural nuances:
Each jurisdiction has unique rules on evidence, hearings and timelines – tailor your approach accordingly. - 2. Leverage local expertise:
Engage attorneys who know the intricacies of their home jurisdictions to build winning strategies. - 3. Coordinate globally:
Ensure consistent messaging and synchronised filings to present a united front. - 4. Stay updated:
Legal frameworks evolve, especially post-Brexit – keep your strategies agile. - 5. Use technology:
Online brand protection software tools can streamline case management and improve decision-making.
Mastering online brand protection across jurisdictions requires more than legal knowledge – it demands a practical, coordinated approach grounded in local expertise. Our team's deep understanding of procedural nuances in Europe, including in the UK, Belgium and the Netherlands, allows us to develop strategies that align local realities with global brand protection goals. Whether it's leveraging the UK's evidentiary flexibility or navigating EUIPO's documentary focus, we help clients make informed, strategic decisions that stand up across borders.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.