[Guest Post] The Well-Known Status of a Non-European Trade Mark in the EU: The Frisby Case

Key Takeaways

• Alicante Court lifted injunctions due to insufficient notoriety evidence.
• Survey only reflected Colombian community, not general consumer base.
• WIPO Recommendation requires broader public recognition for well‑known status.
• Frisby's 50‑year Colombian history may aid EU well‑known claim.
• Cancellation actions will test non‑use versus reputation criteria.

Pulse Analysis

The recent decision by the Alicante Court of Appeal to lift preliminary injunctions in the Frisby trademark battle marks a pivotal moment for foreign brands seeking well‑known status in the EU. By rejecting a survey that measured recognition solely among Colombia‑origin residents, the court emphasized that notoriety must be demonstrated within the broader relevant sector of the public. This approach aligns with the WIPO Joint Recommendation, which mandates a comprehensive assessment of consumer awareness rather than niche familiarity. The ruling therefore raises the evidentiary bar for trademark owners who rely on demographic‑specific data to prove fame.

Under Article 6bis of the Paris Convention, the EUIPO and European courts apply the WIPO Recommendation’s multi‑factor test, weighing not only public recognition but also duration, geographic reach, and prior well‑known declarations. The Frisby case mirrors earlier EUIPO decisions, such as the Colombiana soft‑drink dispute, where courts dismissed limited surveys and required evidence of general market penetration. Nonetheless, Frisby’s 50‑year legacy in Colombia, its portfolio of over 150 registrations across nine countries, and prior well‑known status in the Andean Community may still sway the final determination. The court’s willingness to consider these ancillary factors could provide a pathway for foreign marks with strong overseas reputations.

For multinational companies, the outcome signals a need to craft broader brand‑awareness campaigns within EU member states, even before formal market entry. Relying on immigrant communities alone may no longer suffice to secure protection against infringement or cancellation. Legal teams should gather cross‑sectional consumer research, leverage media exposure, and document international registrations to satisfy the WIPO criteria. As the pending cancellation and bad‑faith actions proceed, the Frisby saga will likely become a reference point for how EU courts balance non‑use against established foreign fame, shaping trademark strategy across the continent.