When a licensee keeps using the brand after termination: what to do first
Once a trade mark licence ends, continued use by the former licensee stops being a contractual matter and becomes unauthorised use of the mark. The rights holder can demand an immediate stop, preserve evidence dated from the termination, and prepare an infringement claim under the EU trade mark regime. Acting within days protects both the claim itself and any border measure that may later depend on it.
Basis
Regulation (EU) 2017/1001 (EUTMR) governs the European Union trade mark and sets out what counts as use without the proprietor's consent. A former licensee has no residual right to affix, offer, market, or advertise goods under the mark once the licence has ended. This applies regardless of where within the Union the continued use is taking place, and regardless of whether the licence ended by expiry, breach, or notice.
Practical consequence
Continued use after termination is treated as infringement, not merely as a breach of the licence agreement. This changes the available remedies: injunctive relief, formal evidence preservation, and customs measures against goods bearing the mark all become available alongside a contract claim. A closely related pattern, set out in When a licensee stops paying and keeps selling explained, shows the same termination logic applied to a patent licence.
Delay narrows the evidential trail. Stock rotates, invoices are archived and then deleted, and marketing posts are edited or removed. The gap between termination and the first documented instance of continued use is often the single fact a court examines most closely.
What to do
The sequence below follows the order courts and counsel typically expect. On the underlying question of What to do first in this situation and what comes up in a different setting — reserve assets held by a third party — the first move is likewise a written demand before any application to a court.
- Send a written cessation notice. The rights holder, through counsel, states the termination date and demands an immediate stop of all use.
- Preserve evidence. The rights holder's team collects dated invoices, packaging samples, and screenshots of any continued marketing or online listings.
- Notify distributors and marketplaces. Counsel sends the same notice to any platform or reseller still carrying the mark through the former licensee.
- Check whether goods are crossing an EU border. If so, counsel prepares a customs application without waiting for the court claim.
- File an interim injunction application. Counsel files with the competent national court as soon as evidence supports a clear breach.
- Prepare the substantive infringement claim. Counsel drafts the claim in parallel, so it is ready once interim relief is granted or refused.
Who decides
The forum depends on where the continued use is happening and whether goods are moving across a border. On the parallel question of What to do first in this situation and who decides it, a migration blocked by an exit clause follows a comparable split between a court and an administrative body.
| Situation | Who decides | Basis |
|---|---|---|
| Continued sale within one member state | National EU trade mark court | Regulation (EU) 2017/1001 (EUTMR) |
| Goods bearing the mark crossing an EU border | Customs authority, acting on an application | Regulation (EU) No 608/2013 |
| Dispute over whether the licence actually ended | Same national court, as a preliminary question | Regulation (EU) 2017/1001 (EUTMR) |
Forks
If the former licensee sells only within one country and there is no cross-border movement, the claim runs solely through the national EU trade mark court, and the customs route does not apply.
If goods bearing the mark are crossing an EU border, customs enforcement under Regulation (EU) No 608/2013 can intercept them independently of the court claim, and the two routes can run at the same time.
If the former licensee disputes that the licence ended at all, the court will first resolve that preliminary question before reaching the infringement claim, which adds time to the timeline above.
Limit
This page does not calculate damages, does not cover marks registered outside the European Union, and does not address criminal proceedings for counterfeiting. A related but distinct scenario, When customs stops counterfeit goods explained, deals with goods that were never licensed at all, rather than a licence that has simply ended.
Sources and limit
The steps above draw only on Regulation (EU) 2017/1001 (EUTMR) and Regulation (EU) No 608/2013. Neither national implementing measures nor case law are cited here, because this page addresses the EU-level position only. For a jurisdiction-specific illustration of how a deadline is tracked once a claim is filed, see Asset in Denmark and the deadline, which shows what a status report can establish and by when.
Checked: 4 March 2025. Primary sources: Regulation (EU) 2017/1001 (EUTMR); Regulation (EU) No 608/2013.
FAQ
What is the first step when a licensee keeps using the brand after termination?
Send a written cessation notice stating the termination date, and begin preserving evidence of continued use on the same day.
Which deadline is already running?
Unauthorised use counts as infringement from the termination date itself, not from any later notice. Any customs application, once lodged, is subject to renewal on the schedule set by the customs authority, so it must be tracked separately from the court claim.
Who decides, and on what evidence?
The national EU trade mark court decides the infringement claim, based on dated evidence of use after termination: invoices, packaging, marketing materials, and screenshots. A customs authority decides border measures separately, based on the application and the goods presented at the border.