Can a foreign trade mark be well known in the EU without being used there? The Frisby case

The dispute between FRISBY COLOMBIA and FRISBY ESPAÑA has taken another turn and it raises a question that does not often come up in practice. How do you show that a non European trade mark is well known in the EU where it has not actually been used there?

By way of background, the Colombian fried chicken chain FRISBY has operated for decades in Colombia and owns a substantial international trade mark portfolio. The issue arose when a Spanish company registered and intended to use the identical FRISBY mark in Spain and at EU level for the same goods and services.

At first instance, FRISBY COLOMBIA obtained preliminary injunctions. However, on 31 March the Alicante Court of Appeal lifted those measures. While the decision itself is not public, it has been reported that the court was not persuaded by the claimant’s evidence, in particular a survey showing recognition of the FRISBY mark in Spain mainly among the Colombian community. That was not considered to be the relevant public.

This goes to the core of the case. Under the approach taken by the European Union Intellectual Property Office and EU courts, drawing on the WIPO Joint Recommendation and Article 6bis of the Paris Convention, the starting point is the degree of knowledge of the mark among the relevant sector of the public.

The difficulty here is obvious. If the mark has not been used in Spain, who is the relevant public? Previous EUIPO decisions suggest that it will usually be the general consuming public for the goods or services in question. In a case concerning the Colombian soft drink COLOMBIANA, the EUIPO rejected the idea that the relevant public could be limited to Colombians living in Spain, even if they were more likely to recognise the brand.

That said, the Frisby case is not quite the same. This is not a mass market soft drink widely sold in shops. It is a restaurant concept closely linked to Colombian food and identity. Its menu and branding are likely to resonate first and foremost with consumers who already know the brand. In that sense, the Colombian community in Spain, which is reported to be around one million people, is not an artificial group. It could be seen as a genuine segment of potential consumers.

Under the WIPO framework, recognition within any relevant sector can be enough. The key issue will be whether the court is willing to treat that community as a relevant sector and whether the evidence shows a sufficient level of recognition within it.

Even if that argument does not succeed, the analysis does not stop there. The assessment of whether a mark is well known is not limited to one factor. Account can also be taken of the duration and extent of use in other countries, the number of registrations, and any prior recognition as a well known mark.

FRISBY has been in use for more than fifty years, has over 150 registrations across several countries, and has been recognised as well known within the Andean Community. The WIPO guidance makes clear that these kinds of factors can be relevant, particularly where there are linguistic or commercial links with the country in question.

There are still obvious difficulties. The mark has not been used in Spain and there are pending non use cancellation actions. Those points will weigh against a finding that the mark is well known.

For now, the case continues without interim relief, alongside the cancellation actions on both sides. Whatever the outcome, it should provide some useful guidance on how far EU law is willing to go in protecting foreign marks.

The broader question remains. In a global market, should reputation carry across borders more easily, or does it still need to be built country by country?