Trade marks before franchising: check your brand rights

A name that is well known in one town is not necessarily ready to be licensed to other businesses. When turning your business into a franchise network, you need to establish whether you can legally allow partners to use the brand and whether its protection covers the planned activities. These checks are worth carrying out before ordering signs, presenting your franchise offer or signing the first agreement.

1. Establish what belongs to the company and what belongs to its founder

Start by listing the brand identifiers that partners will be allowed to use. Include the name, logo, distinctive product branding and graphic versions used on the premises and online. Distinguish trade marks from domain names, social media account names and copyright-protected materials. Owning a domain name or having a business registered in Poland’s CEIDG business register or KRS National Court Register is no substitute for trade mark protection.

For each brand identifier, establish:

• who is the applicant or registered rights holder;
• whether an application is pending or protection has already been granted;
• which goods, services and territories the protection covers;
• whether the right remains in force;
• whether there are any licences, restrictions or disputes relating to it.

A common problem arises when the founder has applied to register the brand as an individual, but their company will be signing the franchise agreements. The company does not automatically acquire rights to the trade mark simply because the same person manages it. An appropriate assignment of rights or a licence allowing the company to grant partners permission to use the mark is needed.

Also check the agreement with the logo designer. Paying for a design does not, in itself, transfer the economic rights in the copyright. Make sure the rights to the artwork are in order, including permission to modify it and use it across the planned channels.

2. Check that protection matches your expansion plans

Trade mark protection has limits. A national trade mark registered with the Polish Patent Office protects the mark within Poland. An EU trade mark, registered by the European Union Intellectual Property Office, covers EU member states. Your choice should reflect your actual business plans, rather than an assumption that broader protection will always be the best option.

Examine the list of goods and services. If your own business runs a café, but franchisees will also sell packaged coffee under the shared brand, check that protection covers those products too. The Nice Classification class number alone is not enough to assess the scope of protection — the specific list of goods and services matters.

Before filing an application or expanding your activities, carry out a search for earlier marks. Looking only for an identical name is too narrow: similar marks used for similar goods or services may also pose a problem. Check national and EU registers, relevant international registrations, and how the marks are used in the market.

Filing a trade mark application is not the same as obtaining protection. If the application is still pending, give prospective franchisees an accurate account of its status. If a significant conflict arises, seek advice from a patent attorney before partners spend money on signage for their premises.

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

Poland has no separate statute comprehensively regulating franchising. A franchise agreement is an ‘unnamed contract’ — one not specifically defined as a contract type in legislation — governed primarily by the Civil Code and the principle of freedom of contract under Article 353¹. Trade marks are governed by Poland’s Industrial Property Law and, for EU trade marks, EU legislation as well. The legislation on combating unfair competition and on copyright and related rights is also relevant.

There is no separate compulsory public register of franchise networks. This should not be confused with business registers or trade mark registration. Registering a trade mark does not approve the franchise model or confirm its profitability.

Identify the licensed marks precisely in the agreement, ideally by giving their registration numbers and attaching visual representations. Define the territory, duration, scope of business activities and permitted uses: on signage, packaging, the outlet’s website or in local advertising. Also establish whether the partner may allow other entities to use the mark.

A licence to use a protected Polish national trade mark must be in writing to be valid. This is a specific requirement for the licence, not evidence of a general requirement for every franchise agreement to take that form. If the franchisor is itself a licensee, check whether it has the right to grant sublicences.

4. Appoint someone to maintain protection

Once the paperwork is in order, put a straightforward brand management system in place. Appoint someone to track renewal deadlines, keep the rights holder’s details up to date and retain the documents. Also plan to monitor potentially conflicting applications and collect evidence of genuine use of the mark.

Partners should know whom to contact about local counterfeits, similar signage or online impersonation. Establish who will assess suspected infringements and take legal action. Do not encourage franchisees to send legal demands themselves without first checking the grounds for the claims.

Prepare procedures for situations where the right to use the brand is challenged, covering how partners will be informed, decisions on temporary signage and the allocation of any costs. These arrangements help maintain trust within the franchise network.

Practical takeaway: before signing the first agreement, prepare a brand rights summary covering the owner, protection status, territory, goods and services, legal basis for granting licences and upcoming deadlines. Resolve any gaps before a partner invests in signage.