The network's brand: who uses it, who defends it and what happens on exit
Nextica Law & Tax protects the asset that holds a retail network together: the brand. It is registered with the Spanish Patent and Trade Mark Office or as an EU trade mark under Regulation (EU) 2017/1001 depending on where you plan to open, in the classes covering what is actually sold today and what will be sold. It is licensed to the franchisee with the scope in writing — which signage, which channels, which territory — and the licence is recorded. Use is monitored: Law 17/2001 on Trade Marks makes the registration's survival depend on genuine use and gives the owner the ius prohibendi of its art. 34, but it also exhausts that right over goods already marketed in the European Economic Area, which is the door parallel trade comes through. And the store's look is protected as an industrial design under Law 20/2003.
The franchisee leaves, the sign stays up, and you discover the licence was never put in writing.
What's included
1. Auditing the registration you already hold
which classes it covers, whether those classes still match what the network sells, and which territories fall outside the expansion plan.
2. Deciding between a national mark and an EU trade mark depending on where you plan to open, with the cost and opposition risk of each route side by side.
3. Registering the trade name, the sign and the domains, and protecting the store's look as an industrial design where the concept is recognisable.
4. A licence agreement with the franchisee setting out the scope in writing — which signs, which channels, which territory, what quality control — and recording it.
5. Rules for using the brand across the network
the manual, the franchisee's social media, and what happens to signage and profiles the day they leave.
6. Monitoring the register and parallel trade, with the archive of proof of use that sustains the right if anyone challenges it.
7. Defence against imitation and against the franchisee who keeps using the brand after termination, with cease-and-desist actions where appropriate.
THE BRAND IS THE ONLY ASSET EVERY STORE SHARES
And it is the least looked after: registered when the first opens, licensed by word of mouth from the third, and found broken when the seventh closes.
Relying on the trade mark to stop a wholesaler reselling cheaper
if those goods were put on the European Economic Area market by the owner or with their consent, the right is exhausted over those units and does not serve to control resale. The control is contractual, and it has its own limit in competition law.
art. 36 of Law 17/2001 on Trade MarksRegistering ten classes and using two
the law makes the registration's survival conditional on genuine, real use for the goods or services registered, and once the statutory period has passed without that use a third party can seek revocation of the unused classes — usually right when you want to stop them registering something similar.
art. 39 of Law 17/2001 on Trade MarksLicensing the brand to the franchisee by word of mouth
with no written contract setting the scope and no recordal, on the day they leave it is unclear what they could use, until when, and what they can be required to take down — and the sign stays up while it is argued.
art. 46 of Law 17/2001 on Trade MarksFrequently asked questions
A wholesaler sells our product cheaper online. Can we stop it with the trade mark?
With the trade mark, usually not, and it is the sector's most expensive confusion. If those goods were put on the market in the European Economic Area by you or with your consent, your trade mark right is exhausted over those particular units and cannot be used to control resale. There are exceptions — goods altered, impaired, or presented in a way that damages the mark's reputation — and there is a different route, the contractual one, which is where it is really decided: who you sell to, on what terms, and what happens if they resell outside the channel. Careful, though: that route has its own limit in competition law.
We registered the mark six years ago and only use it in two of the ten classes. Is that a problem?
It can be. Law 17/2001 requires genuine, real use of the mark for the goods or services it was registered for, and once the period the law itself sets has passed without that use, a third party can seek revocation for the unused classes — and usually does so exactly when you are trying to stop them registering something similar. The review is straightforward and worth doing before expanding: which classes are used, what evidence proves that use, and whether a new application is needed to cover what the network sells today and did not sell then.
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