The questions we are asked most often by brand owners, in-house legal teams and intellectual property firms about protecting trademarks online.
What is the difference between counterfeiting and trademark infringement?
Trademark infringement is the broader notion: it covers any unauthorised use of a sign identical or similar to a protected trademark, for identical or similar goods or services, creating a likelihood of confusion. That includes a misleading domain name, a social account impersonating a brand identity, or an advertisement trading on a name.
Counterfeiting is one particular — and the most visible — form of it: it involves reproducing or imitating the sign on goods that are themselves counterfeit. In other words, all counterfeiting is trademark infringement, but not all infringement involves a counterfeit product. The distinction matters in practice: the available levers, the evidence to gather and the counterparties — platform, registrar, ad network, customs — differ from one case to the next.
We examine this in our article Counterfeit products: the central role of the trademark in deception.
How much does action against online counterfeiting cost?
The cost depends less on the type of infringement than on the level of escalation chosen. Three tiers stand clearly apart.
- Reporting through platform brand protection programmes (marketplaces, social networks, search engines) is free of charge. The real cost is the human time spent detecting, qualifying and following up on cases.
- A cease-and-desist letter drafted by counsel incurs fees, usually on a fixed-price basis, and assumes an evidence file has already been assembled.
- Court action — infringement seizure, interim proceedings, proceedings on the merits — represents a far higher order of magnitude and runs from several months to several years.
This is precisely why prioritisation is decisive: bringing heavy proceedings against a low-impact infringement costs more than the harm avoided. Our approach is to qualify each case — commercial impact, reputational risk, likelihood of confusion, complexity of action — so that escalation is reserved for the files that warrant it. See our solution.
How long does it take to remove a marketplace listing?
Timescales vary considerably depending on the platform, the quality of the report and the status of the reporting party. A report filed by a rights holder enrolled in the platform’s brand protection programme, supported by a valid registration number and precise evidence, is handled markedly faster than a generic complaint.
Three factors consistently extend the process: an incomplete evidence file, a counter-notice from the seller, and the listing reappearing under a different account. That last point is the most underestimated — an isolated takedown, with no monitoring of repeat postings, settles nothing durably.
Do you need a registered trademark to take action?
For an infringement action, yes: it presupposes a registered trademark in force in the territory concerned, for the classes of goods or services at issue. Without registration, that basis is unavailable.
Other routes remain open without a registration, notably unfair competition or free-riding claims, but they rest on demonstrating fault and harm, which is more demanding in practice. Platform brand protection programmes, for their part, almost always require a registration number.
What can be done about a domain name that reproduces our trademark?
Three routes coexist: direct negotiation with the registrant, out-of-court dispute resolution — UDRP for generic extensions, and country-specific procedures such as SYRELI for .fr — and court action. Out-of-court proceedings are generally the fastest and the most predictable in cost, but they require showing that the registrant has no right or legitimate interest and that the registration was made in bad faith.
The operational difficulty is not the procedure itself but detection: abusive registrations come in waves, often across several extensions at once.
Can action be taken against a seller based abroad?
Yes, but effectiveness rarely comes from direct action against the seller. It comes through the intermediaries: the platform hosting the listing, the domain registrar, the advertising network, the payment provider, or customs where physical goods are imported. These actors hold immediate levers where cross-border litigation is slow and uncertain.
The quality of the evidence file directly conditions how responsive those intermediaries are: dated record, timestamped capture, identification of the disputed sign and of the right relied upon.
How often should trademarks be monitored?
Occasional monitoring is the main blind spot in brand protection setups. An infringement detected three months after going live has already produced most of its effect: diverted sales, search rankings acquired, confusion settled in customers’ minds.
Continuous monitoring, covering marketplaces, search engines, social networks and domain registrations simultaneously, shortens that detection window. This is the subject of our article Detecting trademark counterfeiting faster.
A question that is not covered here?
Describe your situation and we will answer with the points that apply to your case. Contact us — or read about the benefits of our approach.
The answers above are general and informational in nature. They do not constitute legal advice and are no substitute for counsel on a specific situation.