Frisby Colombia has suffered the worst blow in the long legal battle against Frisby Spain over the use of its brand in Europe. The Spanish Patent and Trademark Office (OEPM) ruled this Wednesday to cancel the registrations of the three brands held by the Colombian company in that country due to lack of use. The Spanish authority indicated that the popular South American fried chicken chain did not prove that its brand was distinctive in that country, as it had not been used for a period of five years. The decision precedes a final ruling, which must be issued by the EU Intellectual Property Office (EUIPO).
Frisby Spain, which a year ago challenged the registrations of the Colombian brand with the aim of opening restaurants with the same name, has celebrated the decision. The company highlighted in a statement that it is a “clear victory.” “The OEPM expressly rules out that downloads of the Frisby app from Spain, knowledge of the sign among the resident Colombian community, or mere presence on social media can prove real use of the brand in Spain,” states the European company.
This Wednesday’s decision is the latest setback for the Colombian company before Spanish courts and authorities. At the end of March, the Provincial Court of Alicante endorsed Frisby Spain to open its restaurants in several cities such as Madrid, Barcelona, or Seville, even before the OEPM’s decision was known, arguing that Frisby Colombia does not have a well-known brand in Spanish territory.
Valencian justice then indicated that this brand “is notoriously known among the Colombian migrant public sector in Spain,” but that this population group — more than 850,000 people, the second diaspora in Spanish territory — was not “sufficiently representative in the market.” The judges understood that “to attribute notoriety to the sign in Spain, broad knowledge by a sector of the population that is minuscule in Spanish society is not enough.”
The OEPM has agreed with several arguments put forward by the judiciary. The body’s resolution, to which this newspaper has had access, considers that for a brand to be known, its notoriety must be proven in several areas such as place and time. In the first aspect, the authority believes that, although the Colombian company proved that the Frisby application is downloaded in different EU countries, including Spain, this is not enough “to demonstrate the use of the sign in this country since you can download the application here and use it when you go to Colombia.”
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Regarding the issue of time, the Office verifies that there has been use of the brand in recent years and that a minimum commercial reach is proven, but it does not consider it valid, as it does not correspond to activity carried out in Spain.
With this latest administrative decision, which adds to the judicial one, Frisby Spain only needs the EUIPO’s resolution to deliver a checkmate to Frisby Colombia. Charles Dupont, representative of the European company, assures that he is confident his company will receive a favorable ruling. “It seems very unlikely that the European office will contradict the Spanish office, knowing that they are the same brands in the same temporal and geographical scope. These are favorable arguments for us,” he states in an exchange of messages. Dupont adds that they will present this decision from Spain to the EU to give more weight to their request for the expiration of the Colombian brand throughout the region.
Although the OEPM’s resolution is a first instance decision and an appeal can be filed within one month, the arguments for Frisby Colombia crumble with each round it loses against its Spanish counterpart. For now, the Colombians’ greatest hope lies with the EUIPO. This body will resolve the request for brand nullity and will decide whether the Colombian company has complied with European commercial regulations by maintaining its registered brand despite not having restaurants or points of sale. Before this office, the Latin American company also requested, in parallel, the annulment of the Spanish brand “for bad faith” and also presented several “respective proofs of use” of its sign in the European Union.
Meanwhile, Frisby Spain is moving forward with the opening of its first points of sale, which are expected to begin operating in the coming months. Dupont intends to establish itself in four cities: Madrid, Barcelona, Seville, and Malaga, with restaurants and dark kitchens. Total triumph, according to this company which initially wanted to ally with the Colombians, seems imminent.
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