Trade marks: what to check before franchising in Spain

A business may operate for years under a trading name without checking whether it can authorise others to use it. Before franchising, that check is essential: a franchise network needs a shared identity that can be used and legally protected. This guide explains how to review your trade mark rights and prepare for their use by future franchisees in Spain.

1. Check who holds the rights and what they can authorise

Start by gathering registration certificates and checking the status of each trade mark. Having a domain name, a registered company name or social media profiles is not enough: these are distinct assets and do not replace trade mark registration.

In Spain, the main legislation is Law 17/2001 on Trade Marks. The Spanish Patent and Trade Mark Office (OEPM) handles national trade mark applications. A European Union trade mark registered with the EUIPO also provides protection in Spain under Regulation (EU) 2017/1001.

Pay particular attention to:

• Owner: is the registered owner the company that will act as franchisor, the founder or a different business?
• Status: has registration been granted and is it still valid, or is there only a pending application?
• Restrictions: are there any licences, encumbrances, oppositions or proceedings that could affect its commercial use?
• Authority: if you use someone else’s trade mark, does your agreement allow you to authorise franchisees to use it?

The franchisor does not necessarily have to own the trade mark: it may hold sufficient rights to use it and permit others to do so. However, that chain of authorisations must be documented. If the founder owns the trade mark but a company will act as franchisor, formalise the relationship between them before offering rights to third parties.

2. Match the protection to the business you plan to replicate

Registration does not automatically protect every activity or cover every country. Its scope depends on factors including the sign registered, the territory and the goods or services listed.

Prepare a table with four columns: sign used, owner, territory, and protected goods or services. Then compare it with what each outlet will actually offer.

For example, a trade mark registered for particular goods does not necessarily cover retail services or additional activities you want to introduce. Do not rely on the class number alone: review the exact wording of the list of goods and services with an industrial property professional.

Also check whether your current logo matches the registered version. A rebrand may warrant new applications; registering a logo does not always mean its wording is protected separately as a word mark.

Before applying for additional protection, search for identical and similar earlier trade marks. An exact-match search is only an initial screening step, not a guarantee that a mark is available.

If you plan to expand beyond Spain, arrange protection before negotiating new openings. A Spanish registration does not automatically extend to other markets.

3. Reflect the rights in the agreement and brand guidelines

Your review of the registrations needs to translate into clear instructions. The franchise agreement and brand guidelines serve complementary purposes: the former sets out rights and obligations; the latter explains how to apply the visual identity.

The agreement should identify the authorised trade marks and specify:

• The territory, outlets and channels in which they may be used.
• How long the authorisation lasts and how this relates to the duration of the franchisor’s rights.
• Permitted uses on signage, packaging, advertising, domain names and social media.
• The process for approving materials and correcting misuse.
• Obligations to remove branding and stop using the marks when the relationship ends.

Do not let franchisees independently register domain names or signs incorporating the trade mark without rules in place. Decide who will own them, who will manage access and how they will be transferred or cancelled when the agreement ends.

The guidelines should include approved files, colours, proportions and examples of incorrect use. Establish a version-control system and a process for communicating changes. Changes that involve significant costs need a clear contractual basis, not simply an instruction in the design guidelines.

4. Organise monitoring and distinguish between registers

Appoint someone to monitor renewals, retain evidence of use and handle potential infringements. Trade mark registrations can be renewed for ten-year periods; a lack of genuine use can also put their continued protection at risk under the applicable legal rules. Keep dated examples of campaigns, packaging and commercial documents.

Spain has specific franchise legislation: Article 62 of Law 7/1996 on Retail Trade and the provisions of Royal Decree 201/2010 that remain in force. The latter includes ownership of, or a licence to use, distinctive signs among the elements of a franchise system.

Do not confuse trade mark protection with the former Register of Franchisors. Royal Decree-Law 20/2018 removed the national obligation to notify that register and repealed the relevant rules governing it. This did not abolish trade mark registration or pre-contractual obligations in franchising.

Practical conclusion: before taking on franchisees, put together a file containing valid registrations, sufficient authorisations, a review of the scope of protection and rules for use. If anything is missing, resolve it before making commitments involving the identity your network will share.