Obelix vs. Obelix: When a Famous Comic Character Goes to War at the General Court

By Toutatis! – Background to the Case

Les Éditions Albert René is the publisher and rights-holder behind the iconic Astérix & Obélix comic book series, one of the world's best-loved and most commercially successful cartoon franchises. The company holds, among other rights, an EU trade mark for the word mark OBELIX, registered since 1998 for a wide range of goods and services including books, clothing, games and entertainment.

In 2020, the Polish company, Works 11 Michał Lubiński, EUIPO applied for an identical word mark – OBELIX –for goods in Class 13 such as firearms, ammunition and explosives. The mark was registered in 2022.

Les Éditions Albert René applied to have that registration declared invalid, invoking its earlier OBELIX mark and arguing that the later registration would damage the reputation of the earlier mark. The EUIPO's Second Board of Appeal (Case R 875/2024-2) rejected the invalidity application. Its reasoning rested largely on two pillars: first, that the reputation of the earlier mark had not been sufficiently established; and second, that in any event there was no relevant link between the marks capable of damaging that reputation, given the vast distance between the goods in question.

Les Éditions Albert René brought the matter before the General Court, which has now annulled the EUIPO decision in its entirety (Case T-24/25).

The Legal Framework: Article 8(5) EUTMR and the Reputation Shield

The protection invoked in this case is the so-called "extended protection" for marks with a reputation, now enshrined in Article 8(5) of Regulation (EU) 2017/1001 (EUTMR). Under that provision, a trade mark proprietor may oppose the registration – or seek invalidity – of an identical or similar later mark where:

1. the earlier mark has a reputation in the EU;
2. the later mark would, without due cause, take unfair advantage of, or cause detriment to, the distinctive character or the repute of the earlier mark; and
3. a link is established in the mind of the relevant public between the two signs.

Unlike likelihood-of-confusion cases, there is no requirement that the goods or services be similar or identical. That is precisely what makes Article 8(5) the relevant tool when a famous mark is confronted with a registration in a completely unrelated field – here, weapons and explosives.

Error No. 1 – EUIPO Mishandled the Reputation Assessment

The General Court's first, and perhaps most fundamental, criticism of the EUIPO concerns the assessment of reputation itself.

The Board of Appeal had taken the position that the mere existence of Obélix-themed products such as toys, books, DVDs, board games, tells us nothing about how the term OBELIX as a trade mark is perceived by the relevant public. Also, it reasoned that the fame of "Astérix & Obélix" as a comic book series did not necessarily mean that consumers, upon seeing the sign OBELIX affixed to products, would perceive it as an indicator of commercial origin or as a reputed trade mark - rather than simply as a descriptive reference to a character from the series (see para 53). In other words, EUIPO drew a sharp line between recognising Obelix as a fictional character and recognising OBELIX as a trade mark — and concluded that the former did not establish the latter.

The General Court disagreed with this assessment, mainly for two reasons:

Products bearing the ® symbol. Les Éditions Albert René had produced examples of products on which the term "Obelix" or "Obélix" appeared accompanied by the registered trade mark symbol ®. This is important evidence: it shows that the sign is being used precisely as a trade mark, not merely as a reference to the character. The EUIPO failed to give this evidence its proper weight (see para. 54 and 55).

Use in combination with the Asterix sign. Much of the evidence showed "Obelix" used alongside "Asterix" – on merchandise, in marketing, and so on. The EUIPO treated this combined use as undermining the standalone reputation of the OBELIX mark (para. 56). The Court firmly rejected that approach (see para. 57 – 59). The fact that a mark is frequently used alongside another mark does not prevent the relevant public from perceiving it as a distinct, independent sign with its own reputation (see, General Court 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). Asterix and Obelix may be an inseparable duo in the comics, but in trade mark law they are each capable of standing on their own two (very large) feet.

Error No. 2 – The Link Analysis Was Far Too Narrow

Even if reputation had been properly assessed, the EUIPO compounded its error in the analysis of the "link" between the two signs – the mental association that must exist in the mind of the relevant public for Article 8(5) to be triggered.

The EUIPO had essentially stopped the analysis at the observation that goods such as firearms/ammunition and books/entertainment are worlds apart, with no overlap in the relevant public (para. 64). From that, it concluded there could be no link (see para. 65).

The General Court considered this approach too restrictive and legally incorrect. The existence of a link cannot be determined simply by identifying the distance between the goods and services, or by establishing that the relevant publics do not overlap. That kind of analysis confuses the question of likelihood of confusion (which does depend on goods/services similarity) with the quite different question of association under Article 8(5).

Instead, the existence of a link must be assessed globally, weighing all relevant factors, most notably (see para. 75):

• The degree of similarity between the conflicting signs (here: identity, since both are the word OBELIX);
• The nature of the goods and services covered by both marks;
• The strength of the earlier mark's reputation – which feeds directly into the likelihood that the public will make a connection even across very different product categories;
• The inherent or acquired distinctiveness of the earlier mark.

This last factor is particularly significant. Where an earlier mark is highly distinctive – whether because it is inherently fanciful or because it has acquired enormous distinctiveness through decades of intensive use – it is far more likely that the relevant public will draw a mental association with any sign that is identical or similar, even if the goods are completely different (see para. 76). OBELIX, as a made-up word from a beloved fictional universe with global cultural penetration, is precisely the kind of mark where high distinctiveness amplifies the likelihood of an impermissible link.

The Court therefore found that the EUIPO had not conducted the required global assessment and had instead relied on an overly mechanical, sector-distance-based approach.

What This Means in Practice

The General Court's annulment sends the case back to EUIPO for a fresh assessment. But beyond the outcome for the parties, the judgment offers a number of clear practical lessons for trade mark owners – and for practitioners advising them.

1. Reputation is cumulative, never piecemeal. When building a reputation case, do not expect any single document or data point to be decisive. Prepare a portfolio of evidence that, taken together, paints a complete picture: sales and market share data, advertising expenditure, press coverage, awards and recognition, consumer survey evidence where available, and any judicial or regulatory decisions that acknowledge the mark's fame.

2. Use of the ® symbol matters. When trade mark owners use the ® symbol consistently on their products and marketing materials, it is explicit signalling to the public – and to EUIPO – that the sign functions as a registered trade mark, not merely as a product name or character reference. Make that evidence part of your file.

3. Dual use with a companion mark does not undermine standalone reputation. Rights-holders who hold several famous marks often use them together – think ASTERIX & OBÉLIX branded merchandise. This is commercially rational and legally unproblematic. Do not allow a trade mark office or opponent to argue that combined use destroys the independent reputation of each mark. The evidence of combined use can and should be presented alongside evidence of standalone use.

4. Article 8(5) is not a likelihood-of-confusion analysis. The very purpose of the extended reputation protection is to reach situations where the goods and services are different. Practitioners and mark owners should push back forcefully whenever an office or opponent tries to short-circuit the Article 8(5) link analysis by simply pointing to differences in sector or public. The strength of the earlier mark's reputation and its inherent distinctiveness are the key variables – not goods proximity.

5. Highly distinctive fanciful marks have stronger cross-sector reach. The more distinctive and well-known a mark, the wider the net of Article 8(5) can be cast. If you own a truly famous, highly distinctive mark – one that has become part of popular culture – its protection against dilution or tarnishment extends across sectors that might seem remote at first glance.

We can Help!

The case raises one issue that deserves a moment's reflection beyond the legal technicalities: the reputational stakes of the registration in dispute. The OBELIX character is, to millions of readers across Europe and the world, a good-natured, jovial giant. Having that name registered for firearms and explosives would, if allowed to stand, create precisely the kind of association that Article 8(5) is designed to prevent – regardless of whether any consumer would actually confuse the two marks. The General Court's judgment rightly ensures that the protection against such tarnishment cannot be avoided by simply pointing to different product categories and calling it a day.

Reputation-based trade mark protection under Article 8(5) EUTMR is one of the most powerful – and most complex – tools in the IP practitioner's toolkit. Establishing reputation, proving the link, and demonstrating detriment or unfair advantage each require a carefully constructed evidentiary and legal strategy.

Whether you are looking to protect a famous mark against a misappropriating registration, defend against an Article 8(5) opposition, or build a proactive evidence base to safeguard the reputation of your brand, our IP team is here to advise you.