The Frisby case: key lessons on genuine use and international trademark protection

In recent months, a particularly striking trade mark conflict has come to light between a well-known Colombian fried chicken chain -very popular in its country- and a Spanish company that has apparently taken advantage of the Latin American brand's lack of commercial activity or effective expansion in Europe to launch its own business using the same name.

The Colombian company, which has had a trademark registration in the European Union since 2005, has initiated several legal actions against its Spanish counterpart. Among them, a lawsuit for infringement of intellectual property rights and unfair competition. In addition, Frisby has applied to the EUIPO (European Union Intellectual Property Office) to invalidate the Spanish trademark on the grounds of bad faith registration.

The immediate origin of the conflict dates back to May, when several social media accounts announced the arrival of "Frisby" in Spain. Many consumers interpreted that, after more than 40 years of history, this was finally the international expansion of the Colombian chain. However, these accounts were not linked to the original company, but to a third party that sought to position its own project under the same brand.

For its part, the Spanish company has also acted: it requested the revocation for non-use of the European registration of Frisby Colombia, claiming that the trademark had not been used effectively in the EU for almost two decades.

This point connects directly with European law, which provides that a trademark may be invalidated if:

Regulation (EU) 2017/1001 - Article 58: "During an uninterrupted period of five years [...] the trade mark has not been put to genuine use in the Union..."

At a comparative level, Chile contemplates a similar regulation. Article 27 bis A of the Industrial Property Law establishes that a trademark may lapse if: "After five years [...] the trademark has not been put to real and effective use within the national territory...". And Article 27 bis B specifies that: "The burden of proving use of the mark shall be on the proprietor". In addition, genuine use must be proven by any means of proof permitted by law.

In both systems, the message is clear: trademark registration grants rights, but they are neither indefinite nor automatic. Lack of sustained use may open the door to revocation applications.

Conclusion

The Frisby case demonstrates that protecting a trademark internationally is not a one-off act, but a strategic process. Registering is only the first step: to keep a trademark, it must be used, documented, monitored and defended.