JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
13 May 2026 (*)
( EU trade mark – Invalidity proceedings – EU word mark Obelix – Earlier EU word mark OBELIX – Relative ground for invalidity – Reputation of the earlier mark – Link between the marks at issue – Article 8(5) and Article 60(1)(a) of Regulation (EU) 2017/1001 )
In Case T‑24/25,
Les Éditions Albert René, established in Vanves (France), represented by T. de Haan and S. Vandezande, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by V. Ruzek, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
WORKS 11 MICHAŁ LUBIŃSKI, established in Katowice (Poland), represented by M. Krekora, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of I. Gâlea, President, T. Tóth and B. Ricziová (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 5 December 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Les Éditions Albert René, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 November 2024 (Case
R 875/2024-2) (‘the contested decision’).
Background to the dispute
2        On 10 January 2023, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered on 29 November 2022 following an application filed by the intervener, WORKS
11 MICHAŁ LUBIŃSKI, on 7 September 2020 for the word sign Obelix.
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class
13 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded to the following description: ‘Projectiles; ballistic weapons; weapons for launching projectiles; small arms; small arms [firearms]; sights, other than telescopic sights, for artillery; gun sights for firearms [not optical or telescopic]; hand grenades; machine guns; military rifles; mortars [weapons]; sling straps for firearms; rifle slings; armor piercing shells; projecting apparatus for missiles; projecting apparatus for grenades; rifle cases; weapon cases for firearms; case covers for firearms; hammers for guns and rifles; noise-suppressors for guns; automatic guns; heavy guns; gun locks; holders, holsters, magazines and cartridges, for weapons and ammunition; component parts for guns; gun parts; tear-gas weapons; weapon apparatus; weapon installations; pepper sprays; gas bombs [weapon]; artillery guns [cannons]; component parts for machine guns; component parts for rifles; tanks [weapons]; howitzers; military pyrotechnics; smoke missiles for armoured vehicles and tanks; detonating caps, other than toys; hunting rifles [sporting rifles]; tripods for firearms; firearm monopods; firearm bipods; sighting devices for firearms [other than telescopic]; safety catches for firearms; tumblers [parts of gunlocks]; breeches of firearms; pistols; open sights for use on firearms; cleaning rods for firearms; hunting firearms; sighting mirrors for guns and rifles; rifle barrels; rifle stocks; cartridge loading apparatus; cartridge pouches; cartridges; pistols [arms]; air pistols [weapons]; projectiles [weapons]; firing platforms; revolvers; primings [fuses]; sporting rifles; gunpowder; lead shot for hunting; apparatus for filling cartridge belts; turrets (gun -); mobile gun mounts’.
4        The application for a declaration of invalidity was based on the earlier EU word mark OBELIX, filed on 1 April 1996 and registered on 3 February 1998 under No 16 154, covering goods and services in, inter alia, Classes
9, 16, 25, 28 et 41 and corresponding to the following description:
–        Class
9: ‘Electrotechnical and electronic, photographic, cinematographic, optical, teaching apparatus and instruments (except projection apparatus) included in Class
9’;
–        Class
16: ‘Paper cardboard; goods of paper and goods of cardboard, printed matter, included in Class
16, newspapers and periodicals, books; bookbinding material, namely cords, wool and other materials for bookbinding; photographs; stationery, adhesives for stationery; artists’ materials, namely goods for drawing, painting and modelling; paint brushes; typewriters and office requisites (except furniture) and office machines, included in Class
16; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks; indoor aquaria; chaplets; terrariums (indoor-) [vivariums]’;
–        Class
25: ‘Clothing, footwear, headgear; non-slipping devices for footwear; tips for footwear; frames (hat -) [skeletons]; studs for football boots; dress shields; linings (ready-made -) [parts of clothing]; footwear uppers; shirt yokes; fittings of metal for footwear; shirt fronts; pockets for clothing; footwear soles; insoles; heelpieces for footwear; heelpieces for stockings; heels; boot uppers; welts for footwear’;
–        Class
28: ‘Games and playthings; gymnastic and sporting articles (included in Class
28); decorations for Christmas trees; Christmas tree stands; Christmas trees of synthetic material; cosaques [toy fireworks]; party favours’;
–        Class
41: ‘Film showings, film production, film rental; publication of periodicals and books; education and entertainment; organising and conducting of trade fairs and exhibitions; public entertainment, amusement parks, production of live events, of musical and speech performances; showing of reconstructions and presentations of a cultural historical and ethnological nature’.
5        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 8(1)(b) and Article 8(5) of that regulation.
6        On 13 March 2024, the Cancellation Division rejected the application for a declaration of invalidity in its entirety on the ground that the evidence was insufficient to prove that the earlier mark had been put to genuine use in respect of the goods and services referred to in paragraph 4 above.
7        On 25 April 2024, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
8        By the contested decision, the Board of Appeal dismissed the applicant’s appeal. First, assuming genuine use of the earlier mark to have
been established, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, since the goods and services in question were dissimilar. Secondly, it found
that the evidence produced
by the applicant did not allow a ‘definite conclusion’ to be drawn as to whether or not the reputation of the earlier mark existed. Thirdly, the Board of Appeal found that there was no link between the marks at issue. It therefore found that the conditions necessary for the application of Article 8(5) of Regulation 2017/1001 were not satisfied.
Form of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
11      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The request for a measure of organisation of procedure
12      By a letter dated 20 January 2025, the applicant requested the adoption of a measure of organisation of procedure, by which the Court would ask EUIPO to provide it with samples of the goods forming part of EUIPO’s administrative file as physical evidence, and not only
photographs of those samples.
13      It should be noted that, at the hearing, the applicant confirmed, after having consulted EUIPO’s administrative file made available to it in the premises
of the Court Registry, that the photographs in that file did indeed represent the samples that
it had produced before EUIPO and that those samples could give the same impression as those photographs. Therefore, it must be concluded that the photographs of the samples produced by the applicant are sufficient to rule on the action. Accordingly, the applicant cannot
invoke, on the basis that the requested exhibits were not produced, an infringement of Article 178(4) of the Rules of Procedure of the General Court or a breach of its rights of defence or of the principle of equality of arms.
14      Consequently, there is no need to grant the request for measures of organisation of procedure made by the applicant.
Substance
15      In support of its action, the applicant relies on two pleas in law, the first alleging infringement of Article 94 of Regulation 2017/1001, read in conjunction with Article 64(2) of that regulation, and the second alleging infringement of Article 8(5) of Regulation 2017/1001 and Article 60(1)(a) of that regulation.
16      As a preliminary point, it should be noted that the applicant does not contest the Board of Appeal’s finding that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the ground that the goods and services in question are dissimilar.
The first plea, alleging infringement of Article 94 of Regulation 2017/1001, read in conjunction with Article 64(2) of that regulation
17      The applicant submits that the contested decision contains a fundamental contradiction in so far as
the Board of Appeal found, on the one hand, that genuine use of the earlier mark was proved
for all the goods and services on which the application for a declaration of invalidity was based, but, on the other hand, that nothing in the evidence suggested that the relevant public would recognise the term ‘Obelix’ as an indicator of commercial origin for the goods and services in question and that there was no information on the manner in which that term, as a trade mark, was perceived by the relevant public. According to the applicant, that contradiction amounts to
a failure to state reasons and an infringement of Article 94 of Regulation 2017/1001. Moreover, in
drawing conclusions contrary to its finding of genuine use, EUIPO also infringed Article 64(2) of that regulation.
18      EUIPO and the intervener contest the applicant’s argument.
19      According to the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
20      The duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 15 and the case-law cited).
21      Moreover, the statement of the reasons for a measure must be logical and contain no internal inconsistency that would prevent a proper understanding of the reasons underlying the measure (see judgment of 21 January 2016, BR IP Holder v OHIM – Greyleg Investments (HOKEY POKEY), T‑62/14, not published, EU:T:2016:23, paragraph 30 and the case-law cited).
22      In the present case, it must be pointed out
that the applicant’s argument is based on a misreading of the contested decision. On the one hand, it is apparent from paragraphs 26 and 27 of the contested decision that the Board of Appeal did not find that genuine use of the earlier mark had been proved
for all the goods and services on which the application for a declaration of invalidity was based, but that, for reasons of procedural economy, it examined the application for a declaration of invalidity on the assumption that genuine use of that mark had been duly proved, which was the most favourable approach for the applicant. Having started from that premiss, the Board of Appeal did not need to – and therefore did not – rule
on the probative value of the evidence submitted in order to demonstrate
genuine use of the earlier mark.
23      On the other hand, it is apparent from paragraphs 52 to 66 of the contested decision that, in the context of the examination of the ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation, the Board of Appeal assessed the reputation of the earlier mark, concluding
that the evidence submitted by the applicant did not allow a definite conclusion to be drawn as to whether or not
reputation of that mark existed. That part of the contested decision also contains the findings disputed by
the applicant concerning the absence of recognition of the term ‘Obelix’ as an indicator of commercial origin for the goods and services in question and the absence of information on the manner in which that term, as a trade mark, was perceived by the relevant public.
24      Therefore, contrary to what is claimed by the applicant, the reasoning in the contested decision was not contradictory, in so far as the Board of Appeal, on the one hand, examined the application for a declaration of invalidity solely on the premiss that genuine use of the earlier mark had been duly proved
but, on the other hand, carried out an assessment of the reputation of that mark. Consequently, it must be held that the applicant has not demonstrated the existence of a contradiction in the reasoning of the contested decision and accordingly
a failure to state reasons.
25      It follows from the foregoing that the first plea must be rejected.
The second plea, alleging infringement of Article 8(5) of Regulation 2017/1001 and of Article 60(1)(a) of that regulation
26      The second plea is divided into two parts, the first alleging an error of assessment as regards the reputation of the earlier mark and the second, in essence, alleging an erroneous assessment of the link between the marks at issue and of the damage to the earlier mark’s reputation.
27      Under Article 60(1)(a) of Regulation 2017/1001 and Article 8(5) of that regulation, upon application by the proprietor of an earlier mark, a registered EU trade mark is to be declared invalid where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is registered are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
28      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the contested mark must be identical or similar. Thirdly, the earlier mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the contested mark must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).
29      As regards the risk referred to by Article 8(5) of Regulation 2017/1001, it must be noted that, although it is true that the primary function of a mark is that of an indication of origin, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys. To that effect each mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, that provision ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 35).
30      Furthermore, according to settled case-law, the infringements referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the contested mark and the earlier mark, by virtue of which the public concerned makes a connection between them, that is to say, establishes a link between them, even though it does not confuse them. The existence of such a link in the mind of the relevant public between the contested mark and the earlier mark is therefore an essential condition for the application of that provision (see judgment of 11 November 2020, Totalizator Sportowy v EUIPO – Lottoland Holdings (Lottoland), T‑820/19, not published, EU:T:2020:538, paragraph 26 and the case-law cited).
31      Finally, it is clear from the case-law that the existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case. Those factors include, first, the degree of similarity between the marks at issue, secondly, the strength of the earlier mark’s reputation, thirdly, the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, fourthly, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use, and, fifthly, the existence of a likelihood of confusion on the part of the public (see judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42, and of 29 October 2025, Itron v EUIPO – Advanced Sanitary Technologies (ITRON), T‑565/24, not published, EU:T:2025:997, paragraph 20 and the case-law cited).
32      It is in the light of those considerations that the arguments put forward by the applicant in support of the second plea must be examined.
33      As a preliminary point, it must be pointed out, as the Board of Appeal did, that the marks at issue are identical, which is not disputed by the applicant.
34      Nor does the applicant dispute the definition of the relevant public, set out in paragraphs 49 to 51 of the contested decision, according to which the goods covered by the contested mark were addressed to a very specific public and, only in rare cases and subject to compliance with strict rules, to
members of the general public. The applicant does not dispute that the degree of attention while purchasing those goods was very high. Nor does it call into question the Board of Appeal’s findings that the goods covered by the earlier mark targeted the general public, whose degree of attention was no higher
than average, and the relevant territory was that of the European Union.
35      Finally, the applicant does not contest the Board of Appeal’s finding that it was for the applicant to show that the earlier mark enjoyed
the reputation claimed at
the date of filing of the application for registration of the contested mark, namely 7 September 2020, and that that reputation still existed at
the date of filing of the application for a declaration of invalidity, namely 10 January 2023.
–       The first part of the second plea, alleging an erroneous assessment of the reputation of the earlier mark
36      The Board of Appeal found, on the basis of a list of goods and services slightly more limited
than that referred to in paragraph 4 above, first, that, even assuming that the comic book series ‘Astérix & Obélix’ is well
known, this did not necessarily mean that the term ‘Obelix’ had a reputation as a trade mark. The Board of Appeal found that, while most of the evidence concerned ‘Astérix & Obélix’ as the name of the series, the applicant had also filed a few documents related to the term ‘Obelix’ as such, such as a Wikipedia entry and an extract from the applicant’s website. The Board of Appeal considered that those documents were not sufficient to prove that the term ‘Obelix’ had a reputation as a trade mark, that they merely mentioned the term as the name of one of the characters of the comic book and that there was nothing in the evidence which suggested that the relevant public would recognise that term as an indicator of commercial origin of
the goods and services in question.
37      Secondly, the Board of Appeal found that the other evidence produced
by the applicant, such as the samples and photographs of products with the character Obélix as their theme, did not provide any information on the manner in which the term ‘Obelix’ as a trade mark was
perceived by the relevant public. Moreover, the Board of Appeal noted that the applicant had provided further evidence, such as copies of the licensing agreements for each of the products themed on the character Obélix and a table containing the
‘annual sales records for the relevant periods’ with sales figures per year from 2018 to 2022. It stated that those figures originated from the applicant itself and were not corroborated by other documents on the file, in particular by any invoices. The Board of Appeal also stated that the mere indication that the products were offered for sale on certain online platforms provided no information on whether they had actually been sold and, if so, in what quantities. According to the Board of Appeal, in the absence of invoices, statements from third parties or other independently verifiable and objective documents on turnover and investments made by the applicant, it was not in a position to verify
the accuracy of the figures provided.
38      According to the Board of Appeal, what was missing in the present case in order to demonstrate the reputation of the earlier mark was evidence regarding the awareness consumers had of the earlier mark in the context of the relevant goods, such as surveys, advertising and promotional material, press and media extracts, overviews of investments for promotion and advertising, information about market share or statements from chambers of commerce and industry associations. The Board of Appeal found that, while certain
of those documents had
indeed been submitted
in the course of the proceedings, they pertained exclusively to the expression ‘Astérix & Obélix’ and not to the sign Obelix as such. It considered that the fact that ‘Astérix & Obélix’ was the name of a famous and popular comic book series did not necessarily imply that the relevant public, upon seeing the sign Obelix on its own affixed to products such as toys, books, DVDs or boardgames, would perceive that sign as a trade mark in the sense of an indicator of commercial origin, or as a reputed trade mark, rather than as a mere descriptive reference to a character from the comic book series in question, in particular in the absence of proof or even arguments in support of such a perception.
39      The Board of Appeal concluded that the evidence produced
by the applicant did not allow a ‘definite conclusion’ to be drawn as to whether the reputation of the earlier mark existed, because the reputation of a trade mark cannot be assumed on the basis of fragmentary and insufficient evidence.
40      The applicant submits that the contested decision is vitiated by an error of law, in that the Board of Appeal infringed Article 8(5) of Regulation 2017/1001. First, it argues that the Board of Appeal called into question the validity of the earlier mark by finding, inter alia, that the sign Obelix was not perceived by the relevant public as a trade mark in the sense of an indicator of commercial origin, or as a reputed trade mark, but was perceived as a mere descriptive reference to a character from the French comic book series ‘Astérix & Obélix’. However, according to the applicant, in opposition or invalidity proceedings based on an earlier mark, it is not possible to find an absolute ground for refusal, such as lack of distinctive character.
41      Secondly, according to the applicant, the conclusion
that the term ‘Obelix’ is perceived as a descriptive element of a character from the comic book series and not as a trade mark in the sense of an indicator of commercial origin is incorrect. It maintains
that the fact that a mark is associated with a fictional character does not, in itself, make it possible to exclude the fact that that mark can also serve as an indication of the origin of the goods in question. In its view, the earlier mark, used alone or in combination with the Asterix trade mark, does not describe the subject matter of the goods, but serves as an indicator of commercial origin for all the goods and services relied on by the applicant.
42      Thirdly, the applicant submits that the earlier mark plays a significant, predominant and decisive role in the combined expression ‘Astérix & Obélix’ and that the combined popularity of those marks must therefore be attributed to the two
marks. It states that the earlier mark is also used independently on many merchandising items for which EUIPO acknowledged genuine use of the mark, demonstrating that it has sufficient repute as a standalone mark. Consequently, the applicant submits that, due to the widespread use of the expression ‘Astérix & Obélix’, which is popular and well
known, as well as the standalone use of the Obelix trade mark, which is well
liked and genuinely used, the Board of Appeal had to conclude that the earlier mark enjoyed
a reputation in the European Union. According to the applicant, the evidence demonstrates popularity, undisputed high figures and use of the mark.
43      EUIPO and the intervener take the view
that the Board of Appeal’s assessment is free from error and maintain, in essence, that the evidence provided by the applicant serves to demonstrate the popularity of the ‘Astérix & Obélix’ series, but is not sufficient to establish that the sign Obelix alone is perceived by the relevant public as an indication of commercial origin, let alone that it has a reputation as a trade mark within the meaning of Article 8(5) of Regulation 2017/1001.
44      EUIPO submits that the applicant’s line of argument is based on a misreading of the contested decision, in so far as the Board of Appeal did not rule out the possibility that the term ‘Obelix’, although referring to a famous fictional character, might also function as a mark or even a mark with a reputation. EUIPO reiterates, however, that the applicant has not proved that the contested sign was used as a trade mark and that it had acquired a reputation within the meaning of Article 8(5) of Regulation 2017/1001, even if the evidence provided by the applicant showcases
the popularity of the ‘Astérix & Obélix’ series.
45      EUIPO contends that the Board of Appeal was correct to find that the vast majority of the evidence related to the composite name ‘Astérix & Obélix’ and that the few documents which referred solely to the term ‘Obelix’ did not demonstrate use as a trade mark or its perception by the relevant public as an identifier of origin. EUIPO also submits that evidence such as product images, licensing agreements or extracts showing goods available for sale on certain online platforms do not contain verifiable data on actual sales performance or any indication of the extent of use or of actual public awareness and do not demonstrate that the term ‘Obelix’ is known as a trade mark by a significant part
of the relevant public. EUIPO therefore states that certain
objective evidence, such as third-party statements, advertising campaigns or market share data, is essential to substantiate a claim of reputation. According to EUIPO, the applicant merely reiterates the broad popularity of the ‘Astérix & Obélix’ franchise which, as the Board of Appeal
correctly emphasised, does not suffice to demonstrate
that the public perceives the term ‘Obelix’ as such as a reputed trade mark. The applicant is attempting to lower the evidentiary threshold to one of plausibility.
46      The intervener submits that the applicant’s line of argument is erroneous, since there is no passage of the contested decision which challenges the validity of the earlier mark or states that that mark is descriptive or that the names of fictional characters cannot be registered as trade marks. According to the intervener, the Board of Appeal analysed the evidence supposed
to confirm the reputation of the earlier mark and correctly
concluded that that reputation had not been demonstrated. The intervener considers
that the Board of Appeal emphasised, correctly, that the popularity of a film or comic book is different from the reputation of a trade mark. It states that the evidence provided by the applicant relates to the popularity of the character Obélix as a
hero of the ‘Astérix & Obélix’ series but does not confirm that the name ‘Obélix’ is used as a trade mark and perceived as such by the public. According to the intervener, the use of the term ‘Obelix’ in a book or a film does not mean that the book or film bears the earlier mark, because in that context that term has a different function, which is to name and designate a hero of the film or book and not to distinguish that book or that film as coming from a certain entrepreneur.
47      In the present case, in the first place, the applicant criticises the Board of Appeal for having called into question the validity of the earlier mark.
48      However, it should be noted that it is apparent from paragraphs 57 to 66 of the contested decision that the Board of Appeal carried out an assessment of
the evidence provided by the applicant in order to establish the reputation of the earlier mark. The Board of Appeal concluded that there was nothing in the evidence which
suggested that the relevant public would recognise the term ‘Obelix’ as an indicator of commercial origin of
the goods and services in question and that, consequently, the evidence did not make it possible to conclude that the earlier mark had a reputation. Therefore, the contested decision involved
an assessment of the reputation of the earlier mark on the basis of the evidence produced
by the applicant in the case at hand. In so doing, the Board of Appeal did not call into question the validity of the earlier mark and did not claim
that the names of fictional characters could not be registered as trade marks.
49      In the second place, the applicant disputes
the Board of Appeal’s conclusions
according to which, on the one hand, there was nothing in the evidence which
suggested that the relevant public would recognise the term ‘Obelix’ as an indicator of commercial origin of
the goods and services in question and, on the other hand, the evidence did not make it possible to conclude that the earlier mark had a reputation.
50      In that regard, it should be recalled that the existence of repute must be assessed by taking into consideration all the relevant factors of the case, that is to say, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 56 and the case-law cited).
51      However, the above list being merely illustrative, it cannot be required that proof of the reputation of a mark pertains to all these elements (see judgment of 13 November 2024, Aesculap v EUIPO – Aeneas (AESKUCARE Food Intolerance, AESKUCARE and AESKUCARE Allergy), T‑64/23 to T‑66/23, not published, EU:T:2024:827, paragraph 25 and the case-law cited).
52      In terms of proof of reputation, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, may be insufficient to constitute proof of the accuracy of those facts (see judgment of 13 November 2024, AESKUCARE Food Intolerance, AESKUCARE and AESKUCARE Allergy, T‑64/23 to T‑66/23, not published, EU:T:2024:827, paragraph 26 and the case-law cited).
53      In that regard, it should be noted that the Board of Appeal indicated, in paragraphs 61 and 62 of the contested decision, that there was nothing in the evidence which
suggested that the relevant public would recognise the term ‘Obelix’ as an indicator of commercial origin of the goods and services in question and that the mere existence, as such, of Obélix-themed products
does not provide any information on the manner in which the term Obelix as a trade mark is perceived by the relevant public. In addition, the Board of Appeal found, in paragraph 65 of the contested decision, that the fact that ‘Astérix & Obélix’ is the name of a famous and popular comic book series did not necessarily imply that the relevant public, upon seeing the sign Obelix on its own affixed to
products
such as toys, books, DVDs or boardgames, would perceive it as a trade mark in the sense of an indicator of commercial origin, or as a reputed trade mark, rather than as a mere descriptive reference to a character from
the comic book series in question.
54      In making those findings, however, the Board of Appeal failed to take into account the fact that it is apparent from the evidence submitted in the proceedings before EUIPO, including the images reproduced in the contested decision, that the applicant provided examples of various products
on which the ‘®’ symbol, which means ‘registered trade mark’, is affixed to the right of the term ‘Obelix’ or ‘Obélix’. Similarly, on several items of evidence, where the term ‘Obelix’ or ‘Obélix’ is used with
the term ‘Asterix’ or ‘Astérix’, the ‘®’ symbol is affixed separately next to each of them.
55      Accordingly, for the relevant public which will purchase those goods, the presence of the ‘®’ symbol will indicate that the term ‘Obelix’ is a registered trade mark and, therefore, that it serves as an indication of the commercial origin of the goods in question.
56      Likewise, the Board of Appeal was incorrect
to exclude, in general, in paragraphs 60, 64 and 65 of the contested decision, the taking into consideration of most of the evidence for the sole reason that it concerned the use of the sign Obelix in combination with, and not separately from, the sign Asterix.
57      In that regard, it should be noted that there is no precept in the EU trade mark system that obliges the applicant to prove the use of its earlier mark on its own, independently of any other mark. The case could arise where two or more trade marks are used simultaneously without altering the distinctive character of the registered sign (see, to that effect, judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34, and of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100). Moreover, the possibility of proving that the earlier mark has a reputation cannot be ruled out on account of the mere fact that it appeared together with another term (see, by analogy, judgment of 29 November 2018, Louis Vuitton Malletier v EUIPO – Fulia Trading (LV BET ZAKŁADY BUKMACHERSKIE), T‑373/17, not published, EU:T:2018:850, paragraph 95). Accordingly, although the majority of the evidence relates to use of the term ‘Obelix’ in the expression ‘Asterix & Obelix’ or ‘Astérix & Obélix’, it cannot be ruled out that that evidence is capable of establishing that the term ‘Obelix’ was used as a trade mark and that the earlier mark might
have acquired a reputation as a mark.
58      The term ‘Obelix’ can be perceived separately when it is used in combination with the term ‘Asterix’, in particular if, as is apparent from certain items of
evidence, including those
reproduced in the contested decision, the terms ‘Asterix’ and ‘Obelix’ or ‘Astérix’ and ‘Obélix’ are each accompanied by an ‘®’ symbol, demonstrating
that they are distinct registered trade marks, each of which indicates, separately, the commercial origin of the goods and services at issue.
59      Furthermore, in paragraph 64 of the contested decision, which lists the types of evidence lacking for the purposes of demonstrating the reputation of the earlier mark, the Board of Appeal itself acknowledges that, by excluding the evidence relating to the expression ‘Astérix & Obélix’, it also excluded those types of evidence from its assessment. That
includes, for example, the document from a third-party website establishing the income generated by the ‘Astérix & Obélix’ films worldwide (Exhibit
7 annexed to the applicant’s written pleading in the proceedings before the Cancellation Division).
60      It follows from the foregoing that, in the light of the evidence produced
by the applicant, the Board of Appeal carried out an erroneous and incomplete examination of the evidence seeking to establish the reputation of the earlier mark.
61      Accordingly, in
rejecting the relevance or ruling out the taking into consideration of a large part of the evidence in the manner described in paragraphs 53 to 59 above, the Board of Appeal failed, contrary to the case-law cited in paragraphs 50 to 52 above, to carry out an assessment of
the existence of the reputation of the earlier mark on the basis of all the relevant factors of the case which could be demonstrated by that evidence.
62      However, such an error of assessment would justify the annulment of the contested decision only in so far as it had
any bearing on the purport
of the contested decision. It is settled case-law that, if, in the particular circumstances of the case, an error could not have had a decisive effect on the outcome, the argument based on such an error relating to the assessment of the facts is nugatory and thus cannot suffice to justify annulling the contested decision (see, to that effect, judgment of 26 July 2023, Apart v EUIPO – S. Tous (Representation of the outline of a bear), T‑591/21, not published, EU:T:2023:433, paragraph 48 and the case-law cited). Accordingly, it is also necessary to examine the second part of the second plea, in so far as the Board of Appeal’s – possibly correct – finding that there is no link between the marks at issue is in itself sufficient to dismiss the application for a declaration of invalidity, with the result that the error vitiating the assessment of the reputation of the earlier mark would have no bearing on the purport
of the contested decision.
–       The second part of the second plea, alleging an erroneous assessment of the link between the marks at issue and of the damage to the reputation of the earlier mark
63      The Board of Appeal noted, for the sake of completeness, that even if the reputation of the earlier mark had been proved, the application for a declaration of invalidity could, in any event, have been dismissed on the basis of Article 8(5) of Regulation 2017/1001, because the relevant public would not establish a link between the marks at issue, thus making it impossible for one of the types of injury listed in that provision to occur.
64      In that regard, it recalled
that the goods covered by the contested mark were completely dissimilar from the goods and services covered by the earlier mark, that there was no proximity between the relevant market sectors and that it was unlikely that the applicant’s commercial activities would be expanded to include firearms, explosives and weapons, the applicant not having
even been able to prove, in the past and in opposition proceedings, genuine use of its earlier French trade mark registered for goods in Class
13. The Board of Appeal also found that the goods covered by the contested mark in Class
13 targeted a very specialised public, namely military personnel, hunters, security specialists and police officers, whereas the relevant public for the goods and services covered by the earlier mark was the general public, the members of which may not
own weapons legally without a permit. It concluded that the overlap between the relevant publics required by the case-law did not exist and that, in the light of the high degree of attention of professionals who purchase firearms, weapons and explosives in the course of their duties, it was doubtful that, in the specific commercial context of the contested sign, they would mentally associate the characteristics of weapons with those of the character Obélix, even if those consumers were familiar with the ‘Astérix & Obélix’ comic books.
65      The Board of Appeal therefore inferred
that it was unlikely that the contested mark, when applied to the goods covered by that mark, would
call to mind the earlier sign, even if its reputation had been proved
(quod non) and in spite of the fact that the signs at issue were identical. Consequently, in the absence of a link between the marks at issue, use of the contested mark would not entail damage to the earlier mark’s distinctive character or repute and, in
marketing its goods in Class
13 covered by the contested sign, the intervener would not take any unfair advantage of the distinctive character – claimed but not proved – or the repute of the earlier mark.
66      The applicant contests that assessment and submits that the Board of Appeal failed to take the relevant factors into account in assessing the existence of a link between the marks at issue, thereby infringing Article 8(5) of Regulation 2017/1001. According to the applicant, first, the Board of Appeal did not give due weight to the fact that the marks at issue are identical. Secondly, the applicant maintains that the Board of Appeal failed to take into account the degree of distinctiveness of the earlier mark, which possesses an exceptionally high distinctive character, since, according to the applicant, it is a unique and fanciful word which has no meaning in any language and which has been used exclusively by the applicant and its controlled licensees for over 60 years. According to the applicant, on account of that undisputed uniqueness and its reputation, the dissimilarity between the goods in question becomes much less significant. Thirdly, the applicant submits that the Board of Appeal did not give sufficient weight to its own hypothesis, namely that the earlier mark has a reputation.
67      Moreover, the applicant maintains that the Board of Appeal also infringed Article 8(5) of Regulation 2017/1001 by concluding that there was no overlap between the relevant publics and that the contested mark was unlikely to call to mind the earlier sign when applied to the contested goods. In its view, the link between those two marks is not hypothetical, but actual and imminent.
68      Finally, the applicant submits that the Board of Appeal infringed Article 8(5) of Regulation 2017/1001 by finding, incorrectly, that the contested mark would not harm the positive image and reputation of the identical earlier mark, notwithstanding the registration and use of the term ‘Obelix’ for war equipment.
69      EUIPO contends that, as
the Board of Appeal correctly concluded that the applicant had not proved that the earlier mark had a reputation within the meaning of Article 8(5) of Regulation 2017/1001, the second part of the second plea must be regarded as ineffective. EUIPO also indicates
that the applicant’s claim concerning damage to the reputation of the earlier mark is new and therefore inadmissible.
70      The intervener contends that, even if the earlier mark was a mark with a reputation (quod non), it derives no benefit from that reputation. The goods for which the contested mark is registered are not fast-moving goods and are not purchased by consumers on a daily basis. According to the intervener, selecting those goods requires a high level of attention and they are intended for a very specific public, namely firearms professionals. The intervener maintains that those persons will not establish a link between the contested mark and the character Obélix and that, although it is possible that they will be
familiar with the books and films featuring that character, there is no proof that that familiarity would encourage or discourage them from purchasing goods bearing the contested mark or that they will associate that mark with the applicant. So far as concerns the applicant’s claim that use of the contested mark will be detrimental to the reputation of the earlier mark because it will be used for lethal weapons, the intervener contends that, if the applicant were genuinely opposed to the use of the contested mark for weapons, it would not have already registered an Obelix trade mark in France for weapons in Class
13. Moreover, the intervener states that the general public will not even be aware that goods in Class
13 bearing the contested mark exist, in so far as those goods covered by that mark are not intended for the general public, are not sold in supermarkets and their advertising is limited solely to specific media and fairs. Consequently, the registration and use of the contested mark would not be detrimental to the repute of the earlier mark, to the extent that
that mark has a reputation.
71      It should be recalled that it is apparent
from the case-law cited in paragraph 30 above that the infringements referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the marks at issue, by virtue of which the public concerned makes a connection between those two marks, that is to say, establishes a link between them, even though it does not confuse them.
72      In the case at hand, in the part of the contested decision devoted to
the assessment of the existence of a link between the marks at issue, the Board of Appeal assumed that the reputation of the earlier mark had been established and took into account a number of factors, namely the degree of similarity of the goods and services in question, the relevant public and the fact that the marks at issue were identical. It is apparent from the contested decision that the goods and services in question were dissimilar and that the relevant publics did not overlap. In the light of those considerations, the Board of Appeal concluded that it was unlikely that the contested mark would have called to mind the earlier mark, even if its reputation had been proved
and in spite of the fact that the marks at issue were identical.
73      However, it should be noted that the analysis carried out by the Board of Appeal was limited, in essence, to only two of the factors set out in paragraph 31 above, namely the degree of similarity between the marks at issue and the nature of the goods or services for which the marks at issue are respectively registered, including the degree of closeness or dissimilarity between those goods or services, and the public concerned.
74      It is therefore apparent from the contested decision that the Board of Appeal concluded that there was no link between the marks at issue on the basis that there was too great a difference between the goods and services covered by those marks and between the relevant market sectors and that there was no overlap between the relevant publics.
75      It should be recalled, however, that it follows from the case-law cited in paragraph 31 above that the existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case.
76      In that regard, EUIPO acknowledged at the hearing that, in order to assess such a link, it would be
necessary to establish a chronology and a degree of reputation, which was not done in the case at hand, since EUIPO had relied on a presumption of reputation. Moreover, it acknowledged that the uniqueness and inherent distinctiveness of the earlier mark are also factors to be taken into account. Consequently, as EUIPO also acknowledged at the hearing, the Board of Appeal was incorrect
to focus solely on the difference between the goods and services in question and the absence of any overlap between the relevant publics as justification for the absence of a link between the marks at issue.
77      It should be noted in particular that the Board of Appeal did not establish – and therefore did not take into account – the degree of the earlier mark’s distinctive character, whether inherent or acquired through use.
78      In that context, it is appropriate to observe that, for the purposes of assessing whether there is a link between the marks at issue, the case-law does not require that the degree of inherent distinctiveness of an earlier mark and the degree of distinctiveness acquired through
use be taken into consideration, but only one of the two (see judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 84 and the case-law cited).
79      It follows that the Board of Appeal should have examined the degree of the earlier mark’s distinctive character, whether inherent or acquired through use.
80      It follows from the foregoing that the Board of Appeal failed to assess the existence of a link between the marks at issue on the basis of all the relevant factors and thus
infringed Article 8(5) of Regulation 2017/1001.
81      In the light of all the foregoing considerations, concerning the illegality vitiating the two grounds on which the contested decision is based, that decision must be annulled, without it being necessary to rule on the other claims put forward by the applicant in the second part of the second plea and on the objection of inadmissibility raised by EUIPO against one of them.
Costs
82      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Moreover, under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party, the Court is to decide how the costs are to be shared.
83      Since EUIPO and the intervener have been unsuccessful in the present case, they must be ordered to bear their own costs and to pay, in equal parts, the costs incurred by the applicant, in accordance with the form of order sought by the latter.
84      Furthermore, the applicant has claimed that EUIPO and the intervener should be ordered to pay the costs it incurred before the Board of Appeal. In that regard, it is sufficient to note that it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to the proceedings before it (see judgment of 29 May 2018, Uribe-Etxebarría Jiménez v EUIPO – Núcleo de comunicaciones y control (SHERPA), T‑577/15, EU:T:2018:305, paragraph 94 and the case-law cited).
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 November 2024 (Case R 875/2024-2);
2.      Orders EUIPO to bear its own costs and to pay one half of the costs incurred by Les Éditions Albert René;
3.      Orders WORKS 11 MICHAŁ LUBIŃSKI to bear its own costs and to pay one half of the costs incurred by Les Éditions Albert René.
Gâlea
Tóth
Ricziová
Delivered in open court in Luxembourg on 13 May 2026.
V. Di Bucci
E. Buttigieg
Registrar
President
*      Language of the case: English.