Protecting the franchised brand

Horst BeckerAriathes

Protecting the franchised brand

The trademark is a core element of the franchise system!!

There is no franchising without trademark!!

© 2014

Who should take the lead?

Franchisor should consider itself responsible for:

(i) trademark registration (WIPO, OHIM, national IP offices);

(ii) defense of the trademark; and

(iii) registration and defense of domain names© 2014

Defense of the trademark

Action against infringers

Infringement actions by third parties against

the franchisor and/or the franchisee

© 2014

Action against infringers

Screening the market for infringers

Legal action against infringer

© 2014

Screening the market

The franchisor and the franchisee should do it

Franchisee should be obliged to report

© 2014

Legal Action against infringers Franchisor should take the lead;

Franchisee should assist;

Check national provisions concerning the right to claim;

Damages: Joint action by franchisor and franchisee is advisable

© 2014

Infringement actions by third parties

Often such an action is directed against a franchisee;

Franchisor should take the lead nevertheless:

as an intervenor; or

by paying and instructing the franchisee‘s attorney

© 2014

Registration and defense of domain names

Registration is a task of the franchisor

Defense against infringers:

WIPO UDRP-procedure

© 2014