How to protect your brand before franchising in Spain

A brand that your customers recognise is not necessarily ready for a franchise network. Before allowing other business owners to use it, you need to check which rights you hold, where they apply and which activities they cover. This review helps prevent a new outlet from relying on a name that you cannot authorise others to use or that lacks sufficient protection.

1. Check what you have actually protected

Your company name, internet domain and trade mark are separate assets. Registering a company name with Spain’s Commercial Registry or buying a domain is not the same as registering a trade mark, nor does it guarantee that you can use the name without infringing earlier rights.

In Spain, the main legislation is Law 17/2001 on Trade Marks. Protection may come from a national trade mark registered with the Spanish Patent and Trade Mark Office (OEPM), a European Union trade mark registered with the EUIPO, or an international registration effective in Spain. You do not have to rely solely on a Spanish national registration.

Prepare an inventory covering:

• The trading name used with customers and registered trade marks.
• The owner of each right and its application or registration number.
• The status of proceedings: application, registration granted, opposition or appeal.
• The goods and services protected.
• The territory covered and relevant renewal dates.

A filed application is not a granted trade mark registration. If it is still pending, do not present it to a prospective franchisee as an already secured right. Also check that the version of the name or logo used in the business matches the protection available.

2. Review the scope of protection before extending use

A trade mark does not protect every activity simply because it is registered. Its scope depends, among other things, on the goods and services included in the registration. The Nice Classification groups these into classes, but the precise wording of the list of protected goods and services is particularly important.

For example, a restaurant business that starts selling packaged food under its brand should check whether its registration covers this new offering. Protection for restaurant services should not be assumed to cover every product sold.

Before franchising, compare three lists: what your current outlet sells, what franchisees will offer and any planned additions. Commission a trade mark clearance search to identify potentially conflicting earlier marks; searching only for identical names may miss relevant similar marks.

If you need broader protection, seek specialist advice on new applications. Do not assume that you can freely add goods or services to an existing registration. Resolve this before committing to investment in signage, packaging or shared campaigns.

3. Make sure you can authorise franchisees to use the brand

The trade mark owner may be the founder, another group company or a third party. None of these arrangements inherently prevents you from setting up a franchise network, but the chain of rights must be properly documented.

If the franchising company does not own the trade mark, review its licence. Permission to use the mark in its own outlet is not enough: it must have sufficient rights to authorise the use intended by franchisees. Pay particular attention to sublicensing terms, territory, duration and grounds for termination.

Spain does have specific franchise legislation: Article 62 of Law 7/1996 on the Regulation of Retail Trade and Royal Decree 201/2010, to the extent that their provisions remain in force. The latter requires pre-contractual information to provide evidence of ownership or a licence to use the trade mark and distinctive signs in Spain, and to disclose any appeals that may affect them and the licence duration, where applicable.

This information must be provided in writing at least twenty working days before the contract or preliminary agreement is signed, or before the prospective franchisee makes any payment to the franchisor. A sales pitch about the brand’s popularity is no substitute for that evidence.

4. Manage use and maintain your rights

The agreement should identify the authorised marks and distinctive signs and define how they may be used. It is advisable to specify their use in outlets, advertising, packaging, domain names and digital profiles, as well as the procedure for approving variations or new materials.

Allocate internal responsibilities too: who monitors renewals, who retains evidence of use and who receives reports of imitations. Trade mark registrations are renewed for ten-year periods; failure to make genuine use of a mark during the statutory period can also leave it vulnerable to revocation. Simply registering it and filing away the paperwork is not enough.

Set up a channel through which franchisees can report possible infringements without taking action independently. Any response should be coordinated with the party legally entitled to enforce the rights.

Practical conclusion: before offering your franchise, gather the certificates, check the scope and validity of protection, and document your authority to allow third parties to use the brand. If any of these elements is missing, address it before making commitments about the brand to a prospective franchisee.