When field-of-use limits are ignored: what to do first
A field-of-use limit fixes what a licence covers, not just how much is paid for it. Use outside that field is not covered by the licensor's consent, so it behaves like unauthorised use by anyone else. Stop the specific use, record how it happened, and identify which right is at stake before writing to the other side.
Basis
Field-of-use clauses turn up across patent, trade mark, software and database licences, and each type of right sits under a different EU instrument. A trade mark licence used outside its field engages the exclusive right defined in Regulation (EU) 2017/1001 (EUTMR). A software licence used beyond its field falls outside the acts permitted under Directive 2009/24/EC. A database licensed for one purpose and used for another engages Directive 96/9/EC. A unitary patent licensed for one field and exploited in another engages the right created by Regulation (EU) No 1257/2012.
None of these instruments uses the phrase "field of use". The limit itself comes from the wording of the licence. The EU instrument only defines the exclusive right that the licence carves an exception to, and that is what the out-of-field use runs into.
| Right licensed | EU instrument engaged | What is at stake |
|---|---|---|
| Trade mark | Regulation (EU) 2017/1001 (EUTMR) | the exclusive right in the registered mark |
| Software copyright | Directive 2009/24/EC | the acts reserved to the rightholder |
| Database, sui generis right | Directive 96/9/EC | extraction and re-utilisation rights |
| Unitary patent | Regulation (EU) No 1257/2012 | the exclusive right attached to unitary effect |
| Other patents, trade secrets, national rights | no EU instrument directly on point | national law and the wording of the licence itself |
What changes once the limit is crossed
A breach of a field-of-use limit is usually pleaded two ways at once: as a contract claim for breach of the licence, and as an infringement claim for use that consent never covered. The two claims run on different clocks and rest on different evidence. A contract claim turns on what the licence says. An infringement claim turns on what was actually done outside the field, regardless of what the licence intended.
Treat the two as separate files from the outset, even where one lawyer runs both. Mixing them in a single letter to the licensee tends to weaken whichever claim is stronger on the facts.
What to do first
- Identify the exact clause defining the field, and mark precisely where the actual use sits outside it. Assign this to whoever holds the licence file, not to the business team that first spotted the use.
- Instruct anyone in contact with the licensee to stop discussing the use informally. A casual remark can later read as a waiver of the limit.
- Have the team that found the breach preserve evidence of the out-of-field use as it stands today — listings, deployment records, marketing material, dated screenshots — before the licensee has a chance to correct it.
- Ask counsel to check the licence for a notice-and-cure mechanism. If one exists, that notice has to go out before any other step that could later look premature.
- Route the file to counsel for a parallel read: contract breach, infringement, or both. The answer changes who decides the dispute and where.
- Hold takedown requests and public statements until that parallel read comes back. A wrong first move built on an infringement theory can undercut a stronger contract remedy.
Who decides
Where the licence names a forum, that forum decides — a named court, arbitration, or an expert determination clause, depending on what was signed. Where the licence is silent, the default is the court with jurisdiction over the licensee's out-of-field conduct, applying whichever exclusive right is engaged from the table above. No EU body rules on a field-of-use breach directly. Each instrument defines the right; national courts, or the forum the parties agreed, apply it to the facts of the use.
Three situations that change the next step
- If the field limit exists to keep two trade mark owners apart in separate markets, the dispute can resemble a coexistence question more than a plain licence breach. See A coexistence agreement is proposed trade mark.
- If the licence covers software or a database and the out-of-field use stays internal, the claim usually remains contractual. Use directed at third parties tends to open the infringement route under the instrument named in the table.
- If the licensed right is tokenised or recorded on a distributed ledger, establishing the breach also means establishing control over the on-chain instrument itself, which raises a different evidentiary problem. See When a right is pledged on-chain in detail.
What this page does not resolve
This page does not resolve a dispute over who owns the underlying result in the first place. If the counterparty is claiming joint ownership rather than accepting the field limit and simply exceeding it, the analysis starts from a different point entirely. See When a development partner claims joint ownership in practice. Nor does it fix the wording of a field-of-use clause for future licences — that is drafting work, not a response to a breach already under way.
Related reading
A related question comes up in the same family of licences: whether "exclusive" and "sole" were used correctly when the field limit was drafted. See When exclusive and sole are used interchangeably: what to.
Verified
This note was checked against the primary EU sources named above: Regulation (EU) 2017/1001 (EUTMR), Regulation (EU) No 1257/2012, Directive 2009/24/EC, and Directive 96/9/EC. Our approach to sourcing and re-checking these instruments is set out in Methodology: collection, cross-checking and dating and the deadline.
FAQ
What is the first step when field-of-use limits are ignored?
Identify the clause that defines the field, mark exactly where the actual use sits outside it, and hand the file to whoever holds the licence — before any informal contact with the licensee.
Which deadline is already running?
Any notice-and-cure period written into the licence starts running from when the breach becomes known, not from when a formal letter is sent. Separate limitation periods run in parallel on any infringement claim, and they depend on the right and the forum, so they need checking on their own facts rather than assumed from the contract clock.
Who decides, and on what evidence?
Whoever the licence names as the forum decides, on evidence of the actual use outside the field — product records, deployment logs, or marketing material showing exactly where the use landed. Where the licence is silent, the court with jurisdiction over that use decides instead, applying the exclusive right engaged by the type of licence at issue.