By Jorge Vicente Martínez, Intellectual Property Lawyer in the PONS IP Litigation Department

Invalidity on the grounds of bad faith may be key to defending earlier trademark rights without genuine use in the EU, as in the Frisby case.

The recent dispute between Frisby Colombia and Frisby España SL over the use of the trademark “Frisby” in European territory raises a central question in trademark law: can a trademark that is registered and well known in another country be protected if it has not been used in the European Union? And, if not, can bad faith be invoked as a defence to prevent its appropriation by a third party?

Frisby S.A. BIC, a restaurant chain specialising in fried chicken with more than 270 outlets in Colombia, has earlier trademark registrations in Spain and the EU. However, these registrations have not been the subject of genuine use in this territory, which is a fundamental requirement for maintaining their validity.

European legislation allows a trademark to be cancelled if it has not been used in a real and genuine manner for five consecutive years. This is precisely the route taken by Frisby España SL, which not only registered its own trademark in the EU, but also requested the cancellation of the earlier registrations before the EUIPO and the SPTO. If no proof of use is provided before 17 July 2025, Frisby Colombia could lose its rights in the region.

However, there is an alternative route with a solid legal basis: alleging bad faith on the part of the new owner and requesting the invalidation of the most recent registration. The European Union Trademark Regulation allows a trademark to be declared invalid when it has been registered in bad faith, i.e., with the intention of blocking a legitimate third party or taking advantage of its reputation without commercial justification.

In this case, the Frisby trademark is widely recognised by the Colombian public. In addition, Spain is home to a community of more than half a million people originally from Colombia. In addition to this are indications such as the reuse of similar visual elements (mascot, colours, narrative references) by Frisby Spain, which could be interpreted as an attempt to appropriate the visual and commercial identity of the original trademark.

For this strategy to succeed, Frisby Colombia must provide clear evidence that the applicant was aware of the existence and reputation of the Colombian trademark and acted with the intention of benefiting from it. Even if the use was exclusively in Colombia, cases such as this allow the authorities to take into account circumstances outside the territorial scope if they help to demonstrate unfair conduct.

At PONS IP, we believe that trademark protection should not only be governed by formal rules, but also by principles of commercial ethics. Bad faith in registration undermines the essence of the trademark system, which seeks to ensure fair competition based on the legitimate differentiation of goods and services.