Trade mark cease-and-desist letters and oppositions: what to do and which documents to prepare
A letter asking you to change a name, withdraw an application or stop using a logo can put past investments at risk. The first useful step is to establish what you have received, which rights are being asserted and what needs immediate attention. Not every challenge carries the same weight or leads to the same outcome.
Is a deadline approaching? Mention it in your first enquiry
When requesting assistance from Marchio Legale, identify the trade mark concerned, the date of receipt, the sender and any deadline stated in the document. Specify whether you received a letter from the other party’s lawyer, a communication from Italy’s UIBM or one from EUIPO. This helps identify the issue before discussing strategy.
A cease-and-desist letter and an opposition are different tools
A cease-and-desist letter asserts a claim and may request, for example, that use stop, materials be withdrawn or a response be provided. An opposition is a proceeding before the competent office challenging registration of an application. The same dispute can involve both: the documents must therefore be read in full, rather than relying on the email’s subject line.
For EU trade mark applications, EUIPO specifies a three-month opposition period from publication. The ordinary period for Italian national applications is also three months from publication. The precise calculation must be checked against the type of right, the proceedings and the communications received; a deadline in a private cease-and-desist letter is distinct from an official procedural time limit.
The checks that inform the response
The analysis must relate the signs to the goods and services actually concerned. It should consider the registrations and applications, their respective dates, territories, business activities and available documents. Two apparently similar names do not tell the whole story; nor can a graphical difference, considered in isolation, settle the issue.
The assessment also considers the result you want: continuing to use the name, defending an application, stopping a competitor or reaching a workable agreement. The cost of changing the brand, materials already produced and the markets involved all help determine how to address the dispute.
Prepare a concise case file
Gather the complete communication, attachments and proof of receipt; application or registration numbers; versions of the names and logos; a chronology of use; examples of websites, packaging, catalogues and campaigns; and any agreements already signed. If the dispute concerns online content, retain URLs, dates and copies of the relevant materials before they are changed.
Your first enquiry only needs to explain the context and flag any urgency. Sharing the case file and reviewing the documents will be arranged with the firm. Where several companies are involved, identify the trade mark owner and the party using it.
Possible ways forward
The response may require a reasoned discussion with the other party, a defence in the proceedings or negotiations on goods, territories and conditions of use. EU opposition proceedings also include a stage for a possible amicable settlement. Agreement is not an automatic step: it must be consistent with the rights and the company’s business.
Marchio Legale, a service of NL Studio Legale in Milan, assists with trade mark registration and protection. To have your situation assessed, describe the challenge and the deadlines: the scope of work and quotation are agreed before the engagement.
References and further reading
Information updated on 15 October 2026. Assessment of an individual matter requires examination of the documents.
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