Introduction to Trademarks in Franchising

An integral part of franchising is the intellectual property rights that protect the franchise. There are many forms of intellectual property rights that deal with franchising, but this blog will concentrate on trademarks.

The definition of a trademark varies from jurisdiction to jurisdiction; however, it can be generally stated that it is defined as being graphically represented, the capacity to distinguish the trademark from others, and the trademark being associated with an undertaking/business.
The theory behind trademark legislation is well surmised by Frank I. Schechter which states that a trademark is:

(1) that the value of the modern trademark lies in its selling power;
(2) that this selling power depends for its psychological hold upon the public, not merely upon the merit of the goods upon which it is used, but equally upon its own uniqueness and singularity;
(3) that such uniqueness or singularity is vitiated or impaired by its use upon either related or non-related goods; and
(4) that the degree of its protection depends in turn upon the extent to which, through the efforts or ingenuity of its owner, it is actually unique and different from other marks.

There are numerous ways an international franchisor can protect their trademark abroad. The most commonly used international registration method can be found in the Madrid Protocol. The Madrid Protocol is closed, meaning that it can only be used by persons or organizations in a Protocol country. The Protocol also has a limited form of central attack, meaning that if you lose your registration rights in the country of origin, you lose it elsewhere as well.

Another well-known registration method is the Community Trademarks within the European Union. Applications for Community Trademarks are made to the Office for Harmonization in the Internal Market.

If you have any further questions about trademark related matters in franchising, please contact an attorney at law Mario L. Herman.