INTELLECTUAL PROPERTY – Well-known trademark : the « Obelix » case
Judgment of the General Court of the UE in case T-24/25 | Les Éditions Albert René/EUIPO – Works 11 Michał Lubiński
Analysis of the EU General Court’s ruling
The initial dispute: a Polish entrepreneur applied for and obtained registration of the word trademark “OBELIX” in 2022 for goods in Class 13 (firearms, ammunition, explosives). Éditions Albert René, holder of the rights to the Asterix universe, and in particular to the word trademark “OBELIX” since 1996, filed an opposition.
The EUIPO’s rejection: the European Union Intellectual Property Office (EUIPO) had initially rejected Éditions Albert René’s request for cancellation, ruling that the reputation of the earlier trademark had not been proven for these specific types of goods.
The General Court of the EU overturned the EUIPO’s decision on appeal, citing the following grounds in particular:
- The General Court considers that the Office failed to take into account key factors such as the use of the ® symbol associated with the name “Obelix” on various merchandise.
- The General Court specifies that the frequent association of the names “Asterix and Obelix” does not prevent the sign “Obelix” from being perceived individually as a distinct trademark with its own reputation.
- Even though the goods (comic books vs. explosives) are very dissimilar and distinct, the EUIPO should have examined whether the public could make an intellectual connection between the two signs in question, which could harm the reputation of the well-known trademark.
Décision: the General Court overturns the EUIPO’s decision. The Office must re-examine the case, taking into account the distinctiveness acquired through the intensive use of the “Obelix” trademark.
Expert’s opinion
Don’t just prove your trademark’s reputation within your primary industry. To claim extended protection and the status of a well-known EU trademark, you must document the use of the sign across all media (merchandise, licenses, advertising), even if such uses are incidental.
Firsh assists you in determining the protection of your trademark rights and establishing their defense in administrative proceedings before trademark offices and in court.
