Buying a franchise: how to check its trade mark in Spain

When you join a franchise network, a key part of your investment depends on the right to use a trade mark. However, a familiar shop sign, an active website or numerous outlets do not prove that the party offering you the contract can grant you that right. Before committing any money, check the trade mark’s protection and the chain of authorisations extending to your future business.

1. Identify the exact trade mark and its protection

Ask the franchisor for the registration number of every trade mark you will use, its owner and the geographical scope of its protection. Also request copies of the registration documents and check them against up-to-date official records: an old certificate may not reflect a transfer of ownership or a change in status.

The following may be relevant when operating in Spain:

• Spanish trade marks, registered with the Spanish Patent and Trade Mark Office (OEPM).
• European Union trade marks, registered with the European Union Intellectual Property Office (EUIPO), whose protection includes Spain.
• International registrations, managed through the Madrid System, where they designate Spain or the European Union and the relevant protection is in force.

Check exactly what is protected: it may be a name, a graphic element or a combination of the two. If the contract specifies a name but the premises display a different logo, ask what rights cover each element.

Review the goods and services covered too. Registration classes help you find them, but it is the specific list of goods and services that matters, not just the class number. A trade mark registered for certain goods does not automatically cover every activity carried out under that name.

2. Check who can authorise your use

Compare the registered owner with the person or company that will sign the agreement as franchisor. A difference does not necessarily indicate a problem: the trade mark may belong to another group company or a third party that has licensed it. What matters is evidence that the party granting you the right to use it has the authority to do so.

If the franchisor is not the owner, request sufficient documentation to verify:

• That it holds a licence or another valid legal basis for commercial use of the trade mark.
• That it can authorise franchisees to use it, within the applicable limits.
• That this right covers Spain and the activity you will carry out.
• That its duration and conditions are compatible with the proposed agreement.

For example, if the franchisor’s authorisation expires before your agreement ends, ask for clarification on how continuity will be secured. An expectation of renewal is not the same as a right already granted.

Law 17/2001 on Trade Marks governs Spanish national trade marks and their licensing. Regulation (EU) 2017/1001 is relevant to European Union trade marks. Have an industrial property specialist review the documents where sublicences, multiple owners or foreign documents are involved.

3. Identify pending applications and disputes

Do not confuse an application with a registered trade mark. Check its status, key dates, renewals and any issues recorded on the registers. Trade marks can be renewed, but that possibility is no substitute for checking that protection is currently in force.

Ask in writing whether there are any oppositions, invalidity or revocation proceedings, infringement claims or agreements that restrict use of the mark. A register search is an initial check, not a guarantee that there are no disputes.

In Spain, Article 62 of Law 7/1996 on the Regulation of Retail Trade and Royal Decree 201/2010 set out specific obligations for franchising. The information that must be provided to prospective franchisees includes evidence of ownership of, or a licence to use, the trade mark, along with details of certain legal proceedings that may affect it.

Do not treat a purported registration number from the former Register of Franchisors as proof of trade mark protection. Royal Decree-Law 20/2018 abolished the national requirement to notify that register; in any event, that procedure neither replaced trade mark registration nor certified that an investment was safe.

4. Reflect your checks in the agreement

The documentation should match what you are going to sign. Ask for the agreement or its appendices to identify the authorised trade marks and specify how they may be used: on the premises’ exterior, in advertising, on websites and social media profiles, and in marketing materials.

Also negotiate what would happen if a claim prevented you from using them. It is worth setting out:

• Who will handle the defence and how claims will be communicated.
• Who will pay for any replacement signage, packaging or materials.
• What arrangements will apply if the business has to stop using the trade mark temporarily.
• What remedies you will have if the right granted to you is lost.

Do not assume that the franchisor will automatically bear all these costs. The extent of each party’s responsibilities will depend on the agreement and the applicable law.

Practical takeaway: before paying, obtain an up-to-date trade mark register extract, evidence that the franchisor can authorise your use, and a clear contractual clause covering any problems that may arise. If any of these is missing, resolve the issue before committing to the investment.