Frisby Trademark Fight Highlights Key Risks for Global Brands
A European trademark dispute is heating up over the use of the Frisby name, pitting a well-known Colombian fast-food chain against a Spanish company that successfully registered the Frisby trademark with the European Union Intellectual Property Office (EUIPO).
(Having put up with the title, we promise that we will not subject our readers to further puns relating to Frisby's main product.)
What's at Stake for the Colombian Original
The outcome could have serious implications. If the Spanish company (Frisby España) prevails, Frisby S.A. BIC (Frisby Colombia) may face significant obstacles to expanding into the European market—despite its decades-long history in the fast-food industry.
To put this in perspective: imagine if Burger King tried to enter a new country, only to find its name already registered by someone else. In fact, that's exactly what happened in Australia, where the chain had to operate under a different name—Hungry Jack's—for years.
How EU Trademark Rules Created an Opening
Frisby Colombia has built a strong reputation as one of the country's pioneering fast-food franchises. It holds trademark rights in several jurisdictions and has cultivated a widely recognized brand.
But when Frisby España registered the word mark "Frisby" with EUIPO in 2024, a trademark conflict was set in motion.
You might assume that Frisby Colombia simply failed to register its trademark in Europe. But the reality is a bit more nuanced. In fact, Frisby Colombia did file a successful trademark application in 2004, for design mark featuring its chicken mascot and the word "Frisby":
The issue lies in how the EUIPO handles trademark applications. Unlike the USPTO, which examines trademark applications for a likelihood of confusion with prior registrations and applications (known as relative grounds for refusal), the EUIPO does not do so on its own initiative. In the EU, relative grounds are only considered if raised by the owner of an earlier right through an opposition or cancellation proceeding.
Why Timing—and Monitoring—Matters
Unfortunately for Frisby Colombia, it appears they did not timely oppose the Spanish application—allowing Frisby España to secure rights to the "Frisby" word mark in the EU.
It's unclear why Frisby Colombia failed to file a timely opposition, but at this stage, its remaining options may include filing a cancellation action or negotiating a coexistence agreement with Frisby España. These are often complex and uphill battles—especially once rights have been formally granted—highlighting the importance of early monitoring and enforcement.
Lessons for Brand Owners
Whether you're a global brand or a local business with international aspirations, the Frisby case offers some important takeaways:
1. Monitor Trademark Activity—Including in Future Markets
Keep an eye on key jurisdictions—even those where you're not yet active. A registration filed today can become a serious hurdle tomorrow. And with trademark registrations cover 27 countries, few jurisdictions are as important to global brands as the EU.
2. Oppose Problematic Applications Promptly
Most jurisdictions, including the EU, have strict deadlines for filing oppositions. If you miss the window, even a strong prior use may not be enough to undo a registration.
3. Understand EUIPO's Role
Unlike the USPTO, EUIPO does not reject confusingly similar marks on its own. It's up to trademark owners to monitor and enforce their rights. If you don't act, no one else will.
Final Thoughts (and a Slightly Dark Chicken Joke)
The Frisby dispute is a powerful example of how global brand protection requires more than just registering trademarks. While that is an important step, brands need to stay on top of activity by other parties that could threaten its trademark rights.
Slightly off-topic, is anyone else mildly disturbed by the fact that el pollo Frisby is encouraging us to eat its own kind? Chick-fil-A really had the right idea with its cows.
h/t to Matthew Memberg for putting this one on our radar.
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