When a distributor claims an implied licence: what to do first
A distributor who has never signed a licence sometimes argues that one exists anyway, inferred from years of supply, marketing spend, or a catalogue you approved. The claim is rarely frivolous, and it rarely resolves itself. The first task is not to argue the point but to fix, in writing, what the agreement actually says and what conduct has followed it. Everything else follows from that record.
Basis
An implied licence is not a status granted by an EU regulation; it is an inference a court draws from conduct when the written contract is silent or ambiguous. What differs by right is which act defines the scope of the exclusive right the distributor claims to be using with permission.
| Right potentially licensed | Governing EU act | What counts as authorised use |
|---|---|---|
| EU trade mark on the goods or in marketing | Regulation (EU) 2017/1001 (EUTMR) | Use tied to the registered goods and services, and to acts the proprietor has actually consented to |
| Computer program supplied with the goods | Directive 2009/24/EC | Acts reserved to the rightholder, unless the licence or the contract's purpose implies consent |
| Database supplied with the catalogue or platform | Directive 96/9/EC | Extraction and re-utilisation reserved to the maker, unless authorised |
If the software embedded in the distributed goods was built by freelance developers who never signed an assignment, the gap sits upstream of the distribution agreement, not inside it. See When freelancers signed nothing: what it costs to be for that separate problem before you address the distributor at all.
Practical consequence
Until the scope of use is fixed, the distributor keeps operating under the disputed reading. Every invoice, every marketing approval, and every renewed order strengthens whichever version of events is later put to a court or arbitrator. Silence on your side is read as acquiescence. That is the practical cost of delay: not a lost right, but a thickening record that argues against you.
What to do first
- Pull the distribution agreement and every side letter, email approval, and purchase order referencing use of the mark, the software, or the database. In-house counsel or the contract owner.
- Map every actual use the distributor makes against the written terms, item by item, not by impression. Legal or compliance team.
- Send a short written notice stating what use you consider authorised and what you do not. Signed by whoever holds signing authority for the agreement.
- Preserve the evidence of course of dealing as it stands today, before either side amends its behaviour in response to the dispute. Records or compliance function.
- Instruct counsel before making any public statement, issuing a takedown, or suspending supply. Management, on counsel's advice.
Who decides
The forum named in the distribution agreement's jurisdiction or arbitration clause decides the question, if one exists. Absent a clause, the competent national court seized by either party decides. In either forum, the written contract is read first; conduct, invoices, and correspondence are read second, to see whether they add to or contradict what the contract says.
Forks
If a third party holds an earlier unregistered sign that pre-dates your own registration, the distributor's use may collide with that older right rather than with any licence you granted or withheld. That is a distinct problem with its own timeline; see An earlier unregistered sign appears trade mark for what to do first.
If the distributor has simply outgrown the original scope, without a competing right in play, a written variation resolves the dispute faster than litigation, provided both sides sign it before the next order ships.
If the agreement embeds royalty logic in a smart contract and the distributor now disputes automatic enforcement of that logic, treat it as a separate dispute with a different mechanism; see When royalties encoded on-chain are ignored in practice.
Limit
This page does not settle whether an implied licence exists on your facts; that depends on the wording of your agreement and on conduct a court has not yet examined. It also does not cover jurisdictions where the distribution agreement sits outside the EU. Each intake follows the same review sequence regardless of the right involved; see How the firm is set up for the checks we run before advising on a specific file.
Verified
State as of the review date on this page. Primary sources: Regulation (EU) 2017/1001 (EUTMR), Directive 2009/24/EC, Directive 96/9/EC.
Related publications
The recording of a licence, once one exists in writing, is a separate question with its own cost and timing; see A licence must be recorded to be effective IP.
If a distributor has already raised the claim and correspondence is under way, send us the agreement and the disputed uses; the first response comes from a partner, in minutes, during business hours.
Frequently asked questions
What is the first step when a distributor claims an implied licence?
Pull the agreement and every side communication, map actual use against its wording item by item, and confirm what was expressly permitted before you respond to the distributor at all.
Which deadline is already running?
A limitation period under the applicable national law starts running from the first unauthorised use you became aware of. Its exact length depends on the jurisdiction and the right in question, so it should be checked before, not after, you send a notice.
Who decides, and on what evidence?
The forum named in the agreement's jurisdiction or arbitration clause decides, or the competent national court if no such clause exists. The decision rests first on the written contract, then on the pattern of dealing between the parties.