When a licensee keeps using the brand after termination: what it costs to be wrong
Once a trade mark licence ends, any further use of the mark by the former licensee is use without consent. That is infringement, not a contractual grey area. The cost of being wrong grows with every invoice, every shipment and every day the former licensee's website still carries the mark. Waiting for the other side to stop on its own is the expensive option.
Basis
An EU trade mark remains a right of the proprietor under Regulation (EU) 2017/1001 (EUTMR) regardless of what a now-expired licence used to authorise. Termination does not need to be proven in a separate forum before the proprietor can act: it removes the licensee's authorisation, and use after that point falls outside the same instrument's protection for licensed use. The licence agreement sets the internal date of termination; the EUTMR governs what happens to the mark once that date has passed.
Practical consequence
Three things change the moment the licence ends. First, every unit the former licensee sells, ships or advertises under the mark becomes a separate act of infringement, not a breach of contract measured once. Second, the proprietor's own remedies — injunction, destruction of stock, disclosure of accounts — apply from that date, not from the date a court eventually hears the case. Third, delay by the proprietor in acting is read by counterparties, and sometimes by a court, as tolerance. A licensee who keeps using a trade mark after termination often also keeps selling without paying royalties on the underlying licence; the pattern for patent licences follows a similar arc — When a licensee stops paying and keeps selling explained.
| Factor | Effect on cost |
|---|---|
| Number of registers where the mark is protected | Each register needs its own notice or filing; the response widens with each one |
| Number of jurisdictions where the former licensee trades | Enforcement steps and forums multiply, not just paperwork |
| Whether a deadline is already running | Waiting narrows the remedies still available |
| Whether the former licensee is identified and reachable | An unreachable opponent adds a service-of-process step before anything else can start |
What to do
- Confirm the termination date in writing. The instructing party should locate the notice or the clause that ended the licence and fix the exact calendar date.
- Send a cease-and-desist notice. Counsel drafts and sends it, addressed to the former licensee, referencing the termination date and the specific uses observed.
- Preserve evidence of continued use. The instructing party should screenshot listings, keep invoices, and log dates before the former licensee has a chance to remove them.
- Check the register. Counsel verifies whether the licence was recorded against the mark and whether that recordal has been updated to reflect termination.
- Decide the forum. Counsel advises on whether a national court, an administrative route, or a negotiated exit is proportionate to the volume of continued use.
- File or escalate if use continues. If the notice is ignored, counsel prepares the application for injunction and, where available, provisional measures.
Who decides
The forum depends on where the former licensee is trading and where the mark is registered. A national court with jurisdiction over EU trade marks hears the infringement claim; it decides on the evidence of continued use after the termination date, not on the terms of the expired licence itself. The licence agreement is read only to establish when authorisation ended. If the same brand also appears on a tokenised offering run by the former licensee, a separate conflicts question can arise for whoever issues that offering — the mechanics are set out here: When the issuer is asked about conflicts: what it.
Forks
If the former licensee stopped using the mark within days of the notice, a documented warning plus a monitored period is usually enough; escalation is not yet proportionate.
If the former licensee is still selling stock produced before termination, the question turns on what the licence itself said about sell-off periods — the answer sits in the contract, not in the EUTMR.
If continued use has moved from residual stock into a genuine production run, the case stops being about clearing old inventory and starts looking like a new, unauthorised deployment — a comparable shift is covered here: When a proof of concept becomes production: what it.
Sources and limit
This page answers what happens once a trade mark licence has ended and use continues. It does not size the register or currency exposure behind a specific mark, and it does not tell you what a report can establish about a named asset held through a licensee structure — that boundary is covered separately: Asset in Jersey and the deadline. It also does not cover counterfeit goods entering through customs, which follows its own enforcement route rather than a licence-termination route.
Related publications
When customs stops counterfeit goods explained covers the parallel situation where the goods in question were never licensed at all.
Proof
Checked: this page reflects Regulation (EU) 2017/1001 (EUTMR) as in force from 1 October 2017. No case-specific deadlines, fees or article numbers are cited beyond what this instrument establishes as a whole.
FAQ
What is the first step when a licensee keeps using the brand after termination?
Fix the termination date in writing, then send a cease-and-desist notice that references that date and the specific uses observed. Acting before evidence disappears matters more than the wording of the first letter.
Which deadline is already running?
The clock starts on the termination date itself, not on the date a court is eventually asked to act. Exact limitation periods depend on the forum chosen, since each forum sets its own rules for how long a claim remains available.
Who decides, and on what evidence?
A court with jurisdiction over the mark decides, on evidence of use after the termination date — invoices, listings, shipments. The terms of the expired licence are relevant only to establish when authorisation ended, not to excuse what came after.