As a franchisor, you have developed a franchise formula that distinguishes itself through, among other things, the trade name, word and logo(s), advertising and layout/inventory, and any newly designed products or processes. If you arrange it properly, such expressions enjoy protection in accordance with copyright, trademark law, trade name law, patent law and design and design law. It would lead too far in this contribution to explain all aspects in this regard. For that reason, I will briefly consider trademark law and the protection of your word and figurative mark(s) below.
The definition of a ‘brand’ is broadly defined in the law. In that definition, trademarks are all signs that serve to distinguish a company’s products or services. A sign is often a word mark, namely the name under which a product or service is marketed, or a figurative mark, for example logos and labels or a logo in which a name appears. You can file your trademarks with the Benelux Office for Intellectual Property (BOIP). When registering, it must be indicated in which class(es) the trademark should be registered. There are 45 classes in total and each class represents a group of products or services. A trademark registered in this way gives the trademark owner (subject to renewal) an exclusive right for a period of 10 years. If a third party uses the same trademark for the same products or services, the trademark owner can take action against this. In that case, a trademark owner can take action against this third party without it being necessary for the trademark owner to state that there is a likelihood of confusion or that damage has been caused to the trademark. After all, one thing or another is assumed. It is also conceivable that a third party uses a sign that is not identical to the registered trademark, but is related to it. The trademark owner can also take action against this, but then the trademark owner must state that there could be a likelihood of confusion among the public. In short, there is a risk of confusion if the public could make a connection between the trade mark and the sign of the third party, also referred to as a risk of association. In short, by filing the name of your products or services (word mark) or your logo (figurative mark), you can take action against third parties who infringe it.
It is also very important in relation to your franchisees that you properly protect your word and/or logos. With the conclusion of the franchise agreement, the franchisee usually acquires the exclusive right to operate the business using the franchise system, including word and figurative marks, trade names, indications, advertising slogans and the like. You can include guarantees in the franchise agreement in order to prevent the franchisee from continuing his activities when the franchise agreement is terminated, while continuing to use your word and/or logos. Not only is it essential to agree on an adequate non-compete clause, but also to include provisions regarding intellectual property. The aforementioned provisions require careful formulation. Ludwig & Van Dam franchise attorneys are of course happy to help you with this.
Ludwig & Van Dam franchise attorneys, franchise legal advice