[Guest post] The well-known status of a non-European trade mark in the EU: The Frisby case

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[Guest post] The well-known status of a non-European trade mark in the EU: The Frisby case

 Söğüt Atilla-Aydın Thursday, April 23, 2026 - Colombia, FRISBY, Guest post, Salvatore Marcenaro, trade marks

The IPKat has received and is pleased to host the following guest contribution by Katfriend Salvatore Marcenaro (Wolf Méndez Abogados Asociados) providing updates on the Frisby case. Here’s what Salvatore writes:

The well-known status of a non-European trade mark in the EU: The Frisby case

by Salvatore Marcenaro

Recently, the highly interesting (and delicious) case of the Colombian fried chicken brand FRISBY saw new developments.

As readers will recall, the case pits FRISBY S.A. BIC (FRISBY COLOMBIA, claimant), owner of the FRISBY trade marks worldwide, against FRISBY ESPAÑA (defendant), which registered and plans to use the identical mark for the same goods and services in Spain and in the EU [see IPKat here].

On 31 March, the Alicante Court of Appeal lifted the preliminary injunctions – originally granted at first instance –requested by FRISBY COLOMBIA against FRISBY ESPAÑA in the trade mark infringement and unfair competition proceedings.

Although the case files are not public, it has been reported that the Alicante Court’s decision was based, among other grounds, on the finding that the survey submitted by the claimant did not constitute sufficient evidence to demonstrate the notoriety (as opposed to reputation) of the FRISBY mark in Spain. The survey, as reported by various media outlets, demonstrated recognition of the FRISBY mark in Spain, but only by the Colombian community residing in that country, which was held not to constitute the relevant sector of the public.

The proceedings will now continue without interim measures, pending resolution of the non-use cancellation actions filed by FRISBY ESPAÑA against FRISBY COLOMBIA’s trade marks in Spain and in the EU, as well as the bad faith cancellation action filed by FRISBY COLOMBIA against FRISBY ESPAÑA’s FRISBY mark.

In any event, this development opens up an interesting discussion regarding the evidentiary standard for establishing the notoriety of a foreign trade mark in a European country, particularly as to the criteria to be considered when the mark is not used in that country.

Comment

A Kat ready to enjoy its Frisby!

To begin with, it is worth noting that with regard to the evidentiary standard for declaring an unregistered trade mark well-known —precisely the avenue FRISBY COLOMBIA is pursuing given the potential cancellation of its registered marks — both the EUIPO and European courts have embraced the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (WIPO Recommendation), which sets out guiding criteria, in accordance with Article 6bis of the Paris Convention.

As the first criterion, Article 2(1)(b)(1) of the WIPO Recommendation establishes the degree of knowledge of the mark among the relevant sector of the public.

In the case of Frisby, since the mark is not currently in use (nor has it been used in the past) in Spain, the relevant sector will be determined by reference to potential consumers. On this point, the Alicante Court, at the interim stage, appears to have accepted the position that the relevant public is the general consuming public of the services in question, rather than the Colombian immigrant community as argued by the claimant.

This position is also supported by prior EUIPO decisions, such as the case involving the Colombian soft drink brand COLOMBIANA LA NUESTRA, which sought a declaration of well-known status in an opposition filed against the mark MÁS KOLOMBIANA... Y QUÉ MÁS [see the decision here].

In that case, the EUIPO held that the relevant sector had to be assessed by reference to the general public for carbonated beverages and could not be limited to a specific group such as Colombians, given that the relevant goods are also available to the general public. The EUIPO consequently disregarded the survey submitted by the opponent and declined to declare the mark well-known.

That said, and taking into account this precedent as well as what has already been decided at the interim stage, while it will be difficult to persuade the Alicante Court to treat the Colombian immigrant community as the relevant sector of the public, there are particularities of the Frisby case that distinguish it and are worth discussing.

• First, while it is true that the potential consumer of FRISBY chicken could be any resident in Spain, it should be noted that we are not dealing here with a soft drink (as in the COLOMBIANA case) that is openly sold in various retail chains, but rather with a fried chicken restaurant rooted in Colombian recipes and traditions. Indeed, FRISBY, although it serves fried chicken generally, combines its dishes with traditional Colombian products such as arepas and chicharrón. It therefore stands to reason that, beyond marketing strategies (which would in any case likely be directed at the Colombian population), the Colombian consumer would naturally be drawn to FRISBY out of brand loyalty, tradition, and recognition. In other words, it is clear that Colombians living in Spain — reported to number approximately one million — constitute a significant consumer segment that could reasonably be considered at least one of the relevant sectors of the public, as potential consumers of FRISBY. This is critical, as explanatory notes 2.15 and 2.16 of the WIPO Recommendation provide that it is sufficient for the mark to be recognized within any relevant sector of the public, and not necessarily among the public at large, for it to be declared well-known. The outcome will also depend, in any event, on whether the submitted survey demonstrates a sufficient level of recognition within the sector ultimately identified as relevant.
• Furthermore, even if the Court were to find that FRISBY is not well-known among the relevant sector of the public (whichever that may be), it will be interesting to see how it weighs the remaining criteria for determining well-known status. The WIPO Recommendation’s explanatory notes expressly state that failure to satisfy any one of the criteria does not preclude a finding of well-known status (explanatory note 2.10). Accordingly, consideration will need to be given to whether the facts that FRISBY (i) has been present in the Colombian market for over 50 years, with a portfolio of more than 150 registered trade marks across over 9 countries and (ii) was declared a well-known mark in the Andean Community market on multiple occasions, constitute sufficient grounds to declare it well-known in Spain.

Admittedly, the non-use of the mark in Spain and the pending cancellation actions weigh against it. However, it is worth recalling that the WIPO Recommendation itself (explanatory notes 2.4 to 2.8) expressly lists as additional criteria the duration, extent, and geographical scope of a mark’s use, promotion and registration in other countries, for determining its well-known status. It also identifies prior declarations of well-known status as a relevant factor — particularly where such recognition exists in a country sharing the same language and enjoying close commercial ties with the country in question, in the case at hand, Spain. These are the criteria that converge substantially in the Frisby case.

In any event, regardless of the substantive outcome, the analysis of all these criteria will prove highly instructive in shaping the framework for determining the well-known status of a foreign trade mark in an EU Member State.

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