Recently, a very interesting (and “delicious”) dispute has unfolded in the world of trademarks surrounding the Colombian fried chicken brand FRISBY. This case has become a real challenge for lawyers, as it raises a complex question: how can a brand that has dominated the market of one country (Colombia) for decades protect its rights in another country (Spain), where it hasn’t even officially begun operating yet?
The core of the conflict lies in the confrontation between the Colombian company FRISBY S.A. BIC, which owns the rights to this brand worldwide, and the Spanish firm FRISBY ESPAÑA, which registered the same name in Spain and the EU for similar services. The Colombians accused the Spanish of trademark infringement and unfair competition, attempting through the court to ban them from using this name.
However, the Alicante Court of Appeal recently lifted previous restrictions against the Spanish company. The main reason was that the court did not recognize the FRISBY brand as “well-known” in Spain. The Colombian side presented survey results showing that the brand is indeed known in Spain. But there was one nuance: it was recognized primarily by representatives of the Colombian diaspora living in Spain. The court decided this was insufficient, as the “relevant public” includes all potential fried chicken consumers, not just a narrow ethnic group.
This situation resembles the case of another Colombian beverage brand, Colombiana La Nuestra. Back then, European regulators also refused to recognize the mark as well-known, stating that since anyone can buy sweet water, recognition must be assessed among the general public, not just among people of Colombian origin.
Yet, in the case of Frisby, there are specifics that provoke discussion. First, although anyone can eat chicken, a Frisby restaurant is not just fast food; it is a part of Colombian tradition serving specific dishes like arepas or chicharron. About a million Colombians live in Spain, and for them, this brand is native. International guidelines indicate that for a mark to be recognized as “well-known,” it is sufficient for it to be recognized in a certain significant sector of the public, not necessarily by absolutely every citizen.
Second, Frisby has an impressive history: 50 years in the market, over 150 registrations in nine countries, and “well-known mark” status in the Andean Community countries. Legal logic suggests that if a brand is extremely popular in a country that shares a common language and close commercial ties with Spain, this should be a weighty argument even on the condition that the brand has not yet opened a single restaurant there.
For now, the case continues without temporary injunctions. The court will have to weigh all the pros and cons: on one hand, the lack of actual sales in Spain, and on the other, huge international reputation and recognition among millions of potential clients. The outcome of this case will be an important lesson for any foreign business planning to enter the European market: one’s fame at home may be too little if you cannot prove that the average European knows you.
Founder of Research & Patent group Intectica, author of patent algorithms for solving problems in the pharmaceutical industry, patent attorney certified in all intellectual property objects (Patents, Design, TM), with education in chemistry and law, chief expert of the patent institution of Ukraine UKRPATENT (1997-2004). Member of international organizations, including ECTA, PTMG, UAM, lecturer and blogger.
