Introduction
Protecting a trademark doesn’t stop at registration. Filing a trademark is a critical first step—but it’s not enough if not followed by an active defense strategy.
In our previous articles, we addressed several little-known weaknesses:
- Zombie trademarks
- Revocation for non-use
- Estoppel through acquiescence
Today, we’re going a step further by examining a crucial yet often overlooked pillar: the litigation and pre-litigation strategy in trademark law.
This strategy is what determines the strength of your rights. A poorly defended trademark can become unusable—or even lost.
1. Why a registered trademark is not automatically protected
Registering a trademark with the INPI (France) or the EUIPO (European Union) grants the owner an exclusive right of use (Article L.713-1 of the French Intellectual Property Code / Article 9 of the EU Trademark Regulation).
But this right is static. It needs to be activated through monitoring, legal reaction, and proof of use.
Otherwise, the owner may lose the ability to act:
- Estoppel through acquiescence: you failed to act against a third party for 5 years. You’re barred from enforcing your rights.
- Revocation for non-use: you haven’t used your trademark for 5 years. It’s revoked.
In some cases, a third party may even claim ownership of your mark or block your ability to use it.
2. Monitoring: An Essential Tool
An effective pre-litigation strategy begins with rigorous monitoring:
- Monitoring similar trademark filings: in the BOPI (France), EU Bulletin, or WIPO databases.
- Online monitoring: domain names, e-commerce platforms, social media.
- Alerts for suspicious uses: products, services, or visuals that exploit your brand identity.
Without vigilance, you risk discovering a conflict too late.
3. Act fast: legal tools for pre-litigation
Once a conflict is detected, several tools are available to act without initiating formal litigation:
► Administrative Opposition
- Legal basis: Article L.712-4 of the French IPC
- Deadline: 2 months from the publication of the conflicting application
- Goal: prevent registration of a similar trademark
► Cease-and-Desist Letter
- A formal letter sent to the alleged infringer
- Helps establish bad faith
- Can support claims for damages if litigation ensues
► Coexistence Agreements
- Framed by case law (e.g., French Supreme Court, Com. July 12, 2016, No. 15-16.774)
- A pragmatic tool for conflict management between two owners
- Defines separate territories or domains of use
These tools help avoid lengthy, costly, and potentially disruptive disputes.
4. Why litigation shouldn’t be ruled out
Despite preventive measures, some cases require litigation:
- Trademark infringement: civil or criminal action (Articles L.716-4 et seq. IPC)
- Trademark invalidity: for infringement of a prior right (Article L.711-3 IPC)
A well-prepared case rests on:
- Proof of use documentation
- Prior pre-litigation steps
- A strategy coordinated with specialized legal counsel
5. The benefits of a proactive strategy
A well-built pre-litigation approach allows you to:
- Demonstrate vigilance in defending your rights
- Avoid damage from inaction
- Strengthen your position in negotiations or litigation
- Reduce direct and indirect costs (legal fees, damages, brand harm, business losses)
In short, it transforms passive protection into active, deterrent enforcement.
Conclusion
Pre-litigation is not a luxury reserved for big brands. It’s an essential legal tool, even for SMEs.
Building a litigation and pre-litigation strategy is part of the trademark lifecycle:
- Before, during, and after its use.
It’s time to treat it that way.
