Franchising your business: protecting your trade mark in France

Your business may have a well-known local brand, but that does not mean its name is ready for franchisees to use throughout France. Before investing in recruitment, secure the trade mark that will unite your franchise network. The aim is practical: to be able to authorise its use, enforce the associated rights and avoid a costly rebrand after the first outlets open.

1. Check who actually owns the rights

Start by distinguishing between the registered company name, trading name, business sign, domain name and trade mark. Registering a company or reserving a web address is no substitute for registering a trade mark. These identifiers may benefit from different forms of protection, but they do not automatically give you exclusive nationwide rights to the name across all business activities.

Put together a file containing:

• registration certificates and any renewals;
• the exact identity of the owner of each trade mark;
• any existing assignments or licence agreements;
• contracts with the logo’s creators;
• domain names and access details for associated digital accounts.

Is the owner actually the entity that will grant rights to franchisees? In an established business, the trade mark may still belong to the founder personally or to another company. This arrangement is not necessarily a problem, but the future franchisor company must have the appropriate permissions, including the right to grant sublicences if it is only a licensee itself.

Also check the copyright in the logo. Paying a graphic designer does not, in itself, transfer all their rights to use it. Have the paperwork reviewed before extending its use across more materials and users.

2. Check availability and the scope of protection

A trade mark must, among other things, be distinctive, lawful and available. A purely descriptive name can be difficult to protect. Conversely, an original name may conflict with an earlier right even if the two are not identical.

Do not therefore limit your search to exact matches in a trade mark database. Also examine visual, phonetic and conceptual similarities, the business activities concerned and other relevant earlier identifiers. A French industrial property attorney or a lawyer can interpret the results and assess the risk.

French trade mark applications are filed with the Institut national de la propriété industrielle (INPI), France’s national industrial property office. Protection depends in particular on the goods and services specified. A class number does not automatically protect every activity within that class. The specification must reflect what your business offers and what franchisees will actually offer.

For example, a restaurant brand planning to sell packaged products under its name should consider this extension before launching them. Protecting only the logo’s visual form may also leave gaps: consider separately whether to register a word mark.

Finally, align the geographical scope of protection with your plans. A French trade mark does not automatically cover operations abroad. Equally, avoid unnecessarily extensive filings where there is no prospect of using the mark.

3. Set out the right to use the mark in the agreement

France has no single, comprehensive legal framework governing franchising. It is regulated in particular by general contract law, competition law and the French Intellectual Property Code. The agreement’s trade mark provisions must accurately reflect the rights held by the franchisor.

In particular, specify:

• the authorised trade marks, with their reference details and owner;
• the activities, media and territories covered;
• the rules governing business signage, advertising and digital accounts;
• the approvals required for local adaptations;
• how trade mark infringements and claims will be handled;
• the requirements for ceasing use when the agreement ends.

Distinguish the scope of the right to use the mark from any commercial territorial exclusivity: these are two separate issues.

Pre-contractual disclosures must be consistent with these provisions. Article L. 330-3 of the French Commercial Code, introduced by what is known as the Doubin Law, applies where making a trading name, trade mark or business sign available is accompanied by an undertaking of exclusivity or near-exclusivity for the business activity. It requires the pre-contractual disclosure document and draft agreement to be provided at least twenty days before signing or, where applicable, before any advance payment. Article R. 330-1 sets out the required information, including details of the trade mark and the franchisor’s rights.

4. Plan ongoing monitoring after the first outlets open

Appoint someone to manage deadlines, evidence of use and alerts. A French trade mark is registered for ten years and can be renewed. It may also be revoked for lack of genuine use over an uninterrupted period of five years, subject to the statutory conditions.

Keep dated evidence, such as advertisements, invoices, packaging and website screenshots showing actual use. Set up a straightforward process for franchisees to report imitations they identify, rather than leaving them to take legal action on their own.

Key takeaway: before offering your brand to your first franchisee, have three points checked: who owns the trade mark, what it protects and how its use will be authorised. This foundation protects your entire franchise network.