European Union General Court: While hearing an appeal on the invalidity of “OBELIX” trade mark under Articles 8(1)(b), 8(5), 60(1)(a) of Regulation (EU) 2017/1001 (Regulation), the Bench comprising of I. Gâlea, President, T. Tóth and B. Ricziová (Rapporteur), examined the interplay between fictional character fame and trade mark protection. The Court stated that the popularity of a comic character does not, by itself, establish trade mark reputation. Further, at the same time, such fictional names can evolve into protected trade marks through use. The Court held that the existence of “link” under Article 8(5) of Regulation requires a comprehensive global assessment, including the distinctiveness of the earlier mark. Since the Board of Appeal failed to assess the distinctiveness of the earlier mark and the existence of a link, the Court annulled its decision.
Background
On 10 January 2023, the applicant, the publisher of the Astérix & Obélix comic book series, filed an application for a declaration of invalidity of the EU trade mark “OBELIX”, which had been registered on 29 November 2022 following an application by the intervener. The said contested mark was registered for firearms, ammunition, and explosives. The application for invalidity was based on the earlier EU word mark “OBELIX”, which was filed on 1 April 1996 and registered on 3 February 1998.
The Board of Appeal assuming genuine use of the earlier mark, found no likelihood of confusion under Article 8(1)(b) of Regulation, as the goods in question were deemed dissimilar. Further, the evidence did not permit a definitive conclusion regarding the reputation of the earlier mark, and consequently, no link between the marks could be established. Therefore, the conditions for applying Article 8(5) of Regulation were not met.
Subsequently, the present appeal has been filed arguing that the contested trade mark infringes Article 94 read in conjunction with Articles 64(2) and 8(5) of the Regulation.
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Analysis, Law and Decision — OBELIX Trade Mark Dispute
1. Whether the trade mark has infringed Article 94 read in conjunction with Article 64(2) of the Regulation
The Court observed that the duty to state reasons constitutes an essential procedural requirement, which must be distinguished from the question of whether the reasoning is well founded. The Court emphasized that while errors in the grounds of a decision may affect its substantive legality, they do not necessarily undermine the adequacy of the statement of reasons, which can remain sufficient even if based on incorrect grounds. Further, the Court noted that a statement of reasons must be logical and free from internal inconsistencies that would impede understanding of the measure’s rationale.
The Court stated that in the present case, the Board of Appeal examined the invalidity application by assuming genuine use of the earlier mark and assessed its reputation. Consequently, no contradiction in reasoning was demonstrated, and the applicant failed to establish a procedural failure to state reasons.
2. Whether the trade mark has infringed the Article 8(5) and Article 60(1)(a) of the Regulation
The Court divided this issue into parts: Part A: Assessment of reputation of the earlier trade mark The Court emphasized that the mere popularity of a fictional character or a comic series does not establish a trade mark’s reputation. The relevant question is whether the public perceives the mark as indicator of the commercial origin of goods or services. Evidence must demonstrate actual use as a trade mark, including recognition by the public, rather than mere references to characters.
However, the Court clarified two key points regarding trade mark use:
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A mark used alongside another sign, such as character illustration, can still be perceived independently.
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The presence of a ‘®’ symbol may signal its function as a registered trade mark to consumers.
While the Board of Appeal examined the evidence, excluding references to combined marks or popular characters does not necessarily preclude establishing reputation. However, even if the assessment was flawed, the absence of a link may suffice to dismiss the invalidity claim.
Part B: Assessment of the Link Between the Marks
The Court noted that an infringement under Article 8(5) of Regulation arises when there is a certain degree of similarity between the marks at issue, such that the relevant public establishes a connection, or link, between them, even in the absence of confusion. In the present case, the Court stated that the assessment conducted was limited to the similarity between the marks and the nature of the goods and services. However, the existence of a link must be assessed globally, considering all factors relevant to the circumstances of the case.
The Court observed that when assessing whether a link exists between the marks, it is unnecessary to satisfy tests for both inherent distinctiveness and distinctiveness acquired through use; proving either is sufficient. Accordingly, the Court stated that the Board of Appeal should have examined the degree of distinctiveness of the earlier mark. By failing to assess the existence of a link between the marks based on all relevant factors, the Board of Appeal did not comply with Article 8(5) of the Regulation.
Accordingly, the Court annulled the decision of the Board of Appeal. Regarding litigation expenses, the Court ordered both the EUIPO and the intervener, to bear their own respective costs and to each pay one-half of the costs incurred by the applicant.
[Les Éditions Albert René v. European Union Intellectual Property Office (EUIPO), Case T-24/25, decided on 13-05-2026]
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Advocates who appeared in this case:
For the Appellants: T. de Haan and S. Vandezande
For the Defendants: V. Ruzek
For the Intervener: M. Krekora
