From Frisby to Mickey: When trademark registration becomes a legal battle

The Colombian restaurant chain Frisby has reported the unauthorized use of its trademark and image by a Spanish entity that claims to have the corresponding European Union registration to operate under that name and with the same graphic identity. Given this situation, the Pereira-based company is considering taking legal action to protect its intellectual property.

Although this case is quite unusual due to all the details surrounding it, it is not the first time that a situation of this type has occurred.

In this article, you'll find a compilation of some of the most iconic business disputes in which companies have taken intellectual property and usage rights to court. All of them highlight the importance of properly registering and protecting trademarks in the markets where they operate.

In 1993, the Disney Company filed a copyright lawsuit against Mickey SRL for the use of its star character's name and likeness. The latter had registered its trademark in Paraguay since 1956 , including a profile silhouette of the character, while Disney had only registered the frontal image.

After several years of litigation, the Supreme Court of Paraguay ruled in favor of the local company, allowing it to continue using its trademark in the country. However, given the territorial nature of the registration and the terms it establishes, Mickey SRL , which is dedicated to food production, cannot market its products outside the country.

The dispute began in the 1980s. At that time, Apple Inc., the technology company best known for disrupting the industry with the development of devices like the iPhone and the MacBook, decided to adopt the 'Apple' trademark.

The problem arose when the record label Apple Corps, the same company that produced the Beatles, sued the former for infringing its trademark in the music industry.

Although the conflict lasted several years amid settlements and accusations over the use of the name, Apple Inc. finally acquired the trademarks related to 'Apple' for $500 million in 2007 , resolving the dispute.

Have you ever heard of the brand Havana Club? Well, besides being the name of a popular liqueur, it's also the subject of an ongoing legal dispute between Bacardi (USA) and Pernod Ricard (France).

It all began in 1993 when the Cuban state-owned company Cubaexport (owner of the Havana Club brand in Cuba) signed an agreement with the French beverage company to market the rum internationally under that name. However, Bacardi, which had purchased the rights from the original owners before the Cuban Revolution, challenged the agreement.

Over the years, both groups have litigated in U.S. and European courts, as well as intellectual property agencies, arguing over the validity of the trademark rights, the legality of the confiscation in Cuba, and the right to market Havana Club in various markets.

This legal dispute centered on the trademark 'Big Mac' and competition over the use of the 'Mac' prefix.

Supermac's, an Irish fast-food chain, sought to register its name in the EU to expand, but McDonald's opposed the application, claiming that the name 'Supermac's' infringed its rights to the 'Big Mac' trademark. However, in 2019, the European Union Intellectual Property Office (Euipo) ruled in favor of the former, allowing it to continue its European expansion strategy.