Trade marks in franchising: check the rights to the brand

A recognisable name can be an important reason to join a franchise network. But a logo displayed at numerous outlets and a representative’s assurances that it is protected are not enough. Before paying the initial fee, check whether the entity signing the agreement can actually authorise you to use the brand in Poland, and what will happen to your investment if it loses that right.

1. Establish exactly what you are buying as the “brand”

A brand is not a single legal right. It may include a name, logo, product names and symbols, internet domain and graphic materials. Each of these elements may belong to a different entity. Registering a business in Poland’s National Court Register (KRS) or Central Register and Information on Economic Activity (CEIDG) is not the same as registering a trade mark, and owning a domain does not prove an exclusive right to a name.

Ask the franchisor to specify:

• the trade marks you will use, together with their application or registration numbers;
• the owner of each trade mark and the legal basis for allowing you to use it;
• the territory and the goods and services covered by the protection;
• the rules for using the name and logo at your premises, in advertising and online.

Distinguish between a word mark, which protects particular wording, and a combined word and figurative mark, which covers a specific composition. Protection for one variant does not automatically mean identical protection for every version of the name and logo.

It is worth drawing up a simple table listing the mark, owner, registration number, scope of protection and legal basis for use. This makes it easier to spot, for example, a difference between the name presented in the franchise offer and the mark specified in the agreement.

2. Check the registers, not just the certificate

The main places to check trade marks protected in Poland are the databases of the Polish Patent Office, the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO). A Polish national registration covers Poland, while a European Union trade mark also includes Poland. For an international registration, you need to check the designated territories and the actual status of protection. An entry in the WIPO database does not, in itself, establish protection in Poland.

Search by both name and owner. Compare the results with the details of the party to your agreement. Then check the status of the right, the filing date, the protection period and the list of goods and services. The Nice Classification groups that list into classes, but a class number alone is no substitute for examining the wording.

An application is not the same as granted protection. If the trade mark is still at the application stage, ask how far the process has progressed and whether there is a risk of opposition. Also ask about disputes, applications to invalidate or revoke the right, and any demands received to stop using the mark.

Do not assume, however, that a lack of registration means the name has no protection at all. Other legal grounds may be relevant, including rules on combating unfair competition. Where marks are similar or the status is unclear, ask a Polish patent attorney to assess the risk. Checking the register yourself is an initial screening exercise, not a full legal assessment.

3. Verify the franchisor’s right to grant a licence

Poland has no separate statute comprehensively regulating franchising. A franchise agreement remains an “unnamed contract”: a contract type not specifically defined by statute, governed primarily by the Civil Code, including the principle of freedom of contract under Article 353¹. That freedom is subject to limits arising from the law, the nature of the legal relationship and principles of social coexistence.

For trade marks, the Industrial Property Law Act is important, as is Regulation (EU) 2017/1001 of the European Parliament and of the Council for EU trade marks. Copyright rules relating to the logo may also be relevant. There is no compulsory state register of franchise networks in which an entry would confirm rights to the brand.

If another company owns the trade mark, ask for evidence of an unbroken chain of rights: from the owner to the franchisor, and then to you. The key questions are whether the master licence permits sublicensing and whether it covers Poland, your planned business activities and the relevant period.

Under Polish law, a licence for a Polish trade mark must be in writing to be valid. Do not rely solely on a verbal promise as your authority to use the mark. A lawyer should check the required form and wording of the provisions for the particular rights covered by the agreement.

Take particular care if the master licence expires before your agreement ends. An assurance that renewal is planned does not remove the risk.

4. Agree what happens if rights are lost or branding changes

Even a valid registration does not rule out a dispute or a subsequent change of brand. Before signing, establish who is responsible for responding to third-party claims and who will bear the reasonable costs of defending them and replacing signage, packaging and advertising materials.

Negotiate specific provisions covering:

• the franchisor’s assurance that it holds the necessary rights;
• an obligation to notify you of disputes and any risk of losing protection;
• maintaining and renewing rights throughout the franchise relationship;
• arrangements for funding mandatory changes to branding;
• how fees will be settled and whether you can end the relationship if lawful use of the brand becomes impossible.

Distinguish between a rebrand planned by the network and a change forced by infringement of someone else’s rights. They need not have the same financial consequences. Also check whether the agreement allows you to run local social media accounts and who will retain control of them after the relationship ends.

Practical takeaway: before paying, confirm three things: what is protected, who can grant you a licence, and who will pay if you can no longer use the brand. A recognisable sign is no substitute for verified rights.