[Guest post] Third-party registration of well-known foreign trade marks in the EU: The Frisby case

The IPKat has received and is pleased to host the following guest contribution by Katfriend Salvatore Marcenaro (Wolf Méndez Abogados Asociados) concerning a recent third-party attempt to register the well-known Colombian “FRISBY” trade mark in the EU. Here’s what Salvatore writes:

Third-party registration of well-known foreign trade marks in the EU: The Frisby case

by Salvatore Marcenaro

From South America comes a very interesting (and delicious!) trade mark case that will surely be of interest to IPKat readers.

FRISBY S.A. (hereinafter, FRISBY COLOMBIA) is a traditional chicken restaurant chain with over 40 years of experience in the Colombian market. In fact, its trade mark has been declared “well-known” on several occasions by the Colombian Trademark Office and the company holds a portfolio of at least 154 trade marks in 9 jurisdictions, according to data from TMVIEW. Part of its trade mark portfolio is the FRISBY logo (a chicken wearing a hat, typically seen welcoming customers to its restaurants), as well as a sound mark related to its iconic slogan, widely recognized throughout Colombia: “Nadie lo hace como FRISBY lo hace” (“Nobody does it like FRISBY does”).

In the EU, FRISBY COLOMBIA is the owner of EU EU trade mark (EUTM) registration No 003635893, for goods and services in Classes 29, 30, and 43:

It also owns three trade marks in Spain in Classes 29, 30, and 42 (registration numbers M2297279, M2295550, and M2297280), consisting of its old logo:

Recently, through a public statement, FRISBY COLOMBIA reported that its trade mark was being used in Spain by a Spanish company with no authorization. Shortly after, a company named FRISBY ESPAÑA (which has no corporate affiliation with the Colombian entity) issued another public statement asserting that it is the owner of the FRISBY trade mark in the EU and announcing its search for partners to open a restaurant in Spain. FRISBY ESPAÑA uses the same lettering and graphic elements as the Colombian company (see here).

Indeed, records show that on 2 September 2024, FRISBY ESPAÑA applied for registration of the word EUTM application ‘FRISBY’ in Classes 29 and 43 (application number 019074115). The application received no oppositions and was granted registration on 13 December 2024.

In addition, FRISBY ESPAÑA has taken further steps against FRISBY COLOMBIA by challenging its trade mark rights. On 10 December 2024, it filed a revocation action for non-use against all three of FRISBY COLOMBIA’s trade marks in Spain. The actions were dismissed due to formal deficiencies.

Subsequently, on 23 April 2025, FRISBY ESPAÑA filed a further revocation action on the same grounds before the EUIPO against the EUTM owned by FRISBY COLOMBIA. This action was admitted on 14 May 2025, and is currently pending.

On its part, on 9 May 2025, FRISBY COLOMBIA filed two new EUTM applications in Classes 29, 30, and 35 (application numbers 019184960 and 019185014), seeking to protect only its updated figurative elements:

Comment

The case has sparked considerable discussion and widespread media coverage in Colombia. FRISBY COLOMBIA has been criticized for failing to file an opposition against the application by FRISBY ESPAÑA although this may be due to the fact that, since the trade mark has not been used in the EU or Spain, FRISBY COLOMBIA may not have been in a position to provide evidence of use if such proof had been requested by the applicant in the opposition proceedings.

IPKat-approved restaurant chef

There has also been criticism of FRISBY COLOMBIA’s failure to file defensive EUTM applications before, which could have hindered FRISBY ESPAÑA’s actions.

Based on the actions of FRISBY COLOMBIA and its statements, everything seems to indicate that it will file an invalidation action on the grounds of bad faith, pursuant Article 59(1)(b) EUTMR. Should such an action be filed, several considerations would arise that could make this an important case:

• First, it appears that FRISBY COLOMBIA has never used its trade marks in the EU. Therefore, to demonstrate that FRISBY ESPAÑA was aware of the existence of its prior rights at the time of filing, it will likely have to rely on its longstanding use and recognition in the Colombian market. Will this be sufficient? There are precedents for bad faith invalidity of trade marks registered abroad (e.g., T-335/14, DoggiS), but the outcome remains uncertain.
• Secondly, FRISBY ESPAÑA, in one of its public statements, expressed its desire to enter into discussions with FRISBY COLOMBIA “to reach an agreement,” and added that, if no such agreement was reached, it would nonetheless continue seeking partners to launch the brand in the EU. Could such a statement serve as evidence of dishonest intent on the part of the applicant?
• Thirdly, the fact that the FRISBY mark has been repeatedly recognized as well-known in Colombia may also support the argument of parasitic intent by FRISBY ESPAÑA to take unfair advantage of that recognition within the EU. The NEYMAR case (T-795/17) suggests this could be relevant, although in that instance the mark enjoyed widespread recognition within the EU — a status the FRISBY trade mark clearly does not hold in this jurisdiction.

Undoubtedly, the fact that FRISBY ESPAÑA, in addition to using the word FRISBY, is also promoting services using the same logos and typeface as FRISBY COLOMBIA could serve as additional evidence in this matter (even though FRISBY ESPAÑA’s EUTM registration is word-only).

In any case, the outcome will depend on the evidence submitted in the proceedings, bearing in mind that the EUIPO tends to apply strict evidentiary standards to prove bad faith.