Trade marks before franchising: how to protect your brand

Having a recognisable name for your own outlet does not necessarily mean you can safely allow other businesses to use it. When building a franchise network, you take responsibility for a brand in which franchisees will invest time and money. Before you start recruiting, make sure the rights to your brand identifiers are in order, check for potential conflicts and establish rules for using the trade mark. This is a separate task from developing your franchise offer or assessing the business’s profitability.

1. Establish what the business owns and what it merely uses

Start by listing your brand identifiers: names, logos, slogans, domain names and social media account names. For each one, record who owns the rights or is party to the relevant agreement, and where the supporting documentation is held. Established businesses often discover that the founder registered the domain in a personal capacity, or that the logo was commissioned without settling copyright ownership.

An entry in Poland’s Central Register and Information on Economic Activity (CEIDG) or National Court Register (KRS) is no substitute for trade mark registration. Similarly, buying a domain does not automatically give you exclusive rights to the name used to identify goods or services. Protection may also arise on other grounds, but its scope needs to be assessed separately.

If an agency or designer created your logo, check the contract. Simply paying the invoice does not mean you have acquired the economic rights in the copyright. The agreement should secure the rights needed for franchisees to use and reproduce the design, and to make agreed changes. Under Polish law, an assignment of economic copyright must be in writing to be valid.

Also establish whether the future franchisor will be the existing business or a new company. If the founder retains ownership of the trade mark, the company must have an appropriate legal basis for using it and authorising others to do so.

2. Check the name before ordering franchisees’ signs

A brand clearance search should go beyond an internet search engine. Check earlier trade marks in the databases of the Polish Patent Office and the European Union Intellectual Property Office (EUIPO), as well as international registrations covering Poland. Similar marks matter as well as identical names, particularly where they cover similar goods or services.

Prepare a short brief for a patent and trade mark attorney, setting out:

• the goods and services you currently offer;
• what franchisees will sell under the brand;
• where you plan to expand;
• which versions of the name and logo you use;
• whether you know of businesses using a similar mark.

The search findings may indicate a need to change the name, narrow the intended scope of protection or carry out a more detailed risk assessment. Finding no identical mark is not a guarantee that the brand is safe to use.

Distinguish between protecting the name as a word mark and protecting a particular graphic design. Registering a logo does not necessarily provide the same scope of protection as registering the name alone. Highly descriptive marks may have limited distinctiveness. It is better to clarify this before expanding the franchise network than after opening further outlets.

3. Match protection to your actual expansion plans

National protection is obtained through registration with the Polish Patent Office. An EU trade mark is registered by EUIPO and provides protection that also covers Poland. Your choice should reflect your expansion plans, budget and the findings of the search for earlier rights. Broader geographical coverage is not always the best starting point.

The specification of goods and services, organised according to the Nice Classification, is crucial. Do not select classes solely on the basis of an everyday description of your business. For example, food service activities and food products sold under your own brand require separate consideration. The application’s scope should reflect realistic plans, rather than an arbitrary list of possibilities.

Filing a trade mark application is not the same as obtaining registered protection. Make this distinction clear in documents provided to prospective franchisees. If the application is still pending, agree with a lawyer how to explain the risk of refusal or a dispute, and who will bear the cost of any necessary rebranding.

Appoint someone to handle official correspondence, renewal deadlines and evidence of trade mark use. Keep advertising materials, photographs showing the mark in use and sales documentation. Prolonged non-use of a registered trade mark can lead to the loss of protection.

4. Link brand rights to the franchisee’s licence

Poland has no separate statute governing franchising and no dedicated register of franchise agreements. A franchise agreement remains an ‘unnamed contract’ — one not specifically defined by statute — based on the principle of freedom of contract under Article 353¹ of the Polish Civil Code. That freedom is limited by legislation, the nature of the legal relationship and the principles of social coexistence. Proposals for specific franchise legislation are not law in force.

The Polish Industrial Property Law, the Act on Copyright and Related Rights and the Act on Combating Unfair Competition are particularly relevant when allowing others to use a brand. The terms of the relationship must also comply with Polish and EU competition law. A licence for a registered trade mark must be in writing to be valid.

Above all, the agreement should specify:

• the exact marks and rights covered by the licence;
• the territory, duration and permitted uses;
• rules for approving advertising and controlling quality;
• rights relating to domains and social media accounts;
• how infringements should be reported and how responsibility is allocated;
• the deadline for removing branding after the relationship ends.

If you use the trade mark under a licence yourself, also check whether you are entitled to grant sublicences. Do not promise franchisees broader rights than you hold.

Practical takeaway: before signing the first agreement, prepare a brand file containing ownership documents, the clearance search findings, the status of protection and the agreed licensing terms. Unresolved rights to a name are a reason to pause licensing it to others, not a task to leave until later.