Trade marks for franchising in Colombia: ownership and licensing

A business can have loyal customers and a recognisable identity without having established who can authorise the use of its trade mark. Before offering franchises in Colombia, check ownership, the scope of protection and the licensing terms. This review protects both the business owner and those joining the franchise network.

1. Check which trade marks you have and who owns them

Start by identifying the signs the franchisee will actually use: the name, logo, product brands and other distinctive elements. Do not assume they are all protected simply because they appear on invoices, shopfronts or social media.

Commercial registration, a company name and an internet domain are not equivalent to trade mark registration. In Colombia, the authority responsible for registering trade marks is the Superintendence of Industry and Commerce (SIC). Check the status of each application or registration and cross-check the information against the business’s documents.

Prepare a record for each trade mark that includes:

• The owner named in the registration or application.
• The file number and current status.
• The protected sign: wording, a graphic representation or a combination of the two.
• The goods or services covered by the protection.
• The registration’s validity period and the person responsible for renewal.

A pending application is not a granted registration. If approval has not yet been given, explain the position accurately and assess the risk before committing third-party investment.

Also check whether the owner is the founder, a business partner or a different company from the one that will grant the franchises. Close relationships between these parties are no substitute for a legal basis allowing the franchisor to authorise use.

2. Match the protection to the business you plan to replicate

The registration must be assessed against the franchise’s specific goods and services. Finding a registered trade mark identical to the one used by the business is not enough: you need to check what it covers and whether that matches the proposed franchise activity.

For example, a business that provides services and also sells its own products should review both activities. Protection for one should not be assumed to cover the other without examining its scope.

Also compare the registered sign with the one actually used. If the business has changed its name, substantially redesigned its logo or added another trade mark, seek advice on whether new applications are needed. Avoid giving franchisees a visual identity that does not match the protection you have reviewed.

Before announcing expansion, commission a trade mark clearance search and an assessment of potential conflicts. A search helps identify risks, but does not in itself guarantee registration or freedom from disputes.

3. Prepare a licence backed by sufficient rights

Colombia has no comprehensive legislation specifically governing franchise agreements: they are treated as contracts without a dedicated statutory framework. The parties’ agreement operates within the Commercial Code and the civil law rules applicable to obligations and contracts; freedom of contract does not allow mandatory rules to be disregarded.

Trade marks are governed by Decision 486 of the Andean Community, which establishes the common industrial property regime. Article 162 regulates trade mark licensing and requires a licence to be in writing for registration. The licence must be registered with the competent national authority; without registration, it has no effect against third parties.

This should be distinguished from the franchise agreement itself: there is no general obligation to enter a franchise agreement in the commercial register simply because it is a franchise agreement. Registering the trade mark licence with the SIC is a separate requirement.

If the franchisor does not own the trade mark, review the document granting it rights. Permission to use the mark at its own premises does not necessarily allow it to grant sublicences to franchisees. Explicitly check that it has this power and that the duration and scope of its rights are compatible with what it intends to offer.

Whether included in the franchise agreement or documented separately, the licence should identify the authorised trade marks, permitted uses, territory, duration and restrictions. Also specify who will arrange registration with the SIC and pay the associated costs.

4. Manage use and keep protection in force

The initial review loses its value if no one subsequently monitors renewals or changes to the business’s brand identity. Appoint someone responsible and maintain a schedule of expiry dates, pending procedures and permissions granted.

Set up a straightforward approval process for use on shopfronts, packaging, advertising and digital channels. It should allow you to verify that franchisees use the authorised signs and do not independently register trade marks, domains or profiles that could create confusion over ownership.

Also establish how suspected imitations will be reported and who will decide on the legal response. Do not leave individual outlets to act independently against the same infringement.

Practical conclusion: before offering a franchise, gather evidence of ownership, confirm the scope of registration and document the right to grant licences. Then assign responsibility for registering the licence and maintaining the rights.