The Polish arms company Works 11 registered the trade mark OBELIX for, among other things, ballistic weapons and hand grenades. Les Éditions Albert René, the publisher of Asterix & Obelix, applied for a declaration of invalidity of this registration. The application was based on the well-known word mark OBELIX, which is registered for, among other things, printed matter, clothing, games and amusement parks. The link with the contested mark is considered harmful.
Both the EUIPO and the Board of Appeal rejected the application. The reason was that the applicant had mainly submitted evidence of use of the mark ASTERIX & OBELIX. It had not been proven that the word OBELIX had been used on its own as a trade mark. In addition, the public would not establish a link because the products were completely different. Fortunately, the General Court corrected this decision. OBELIX is indeed used as a trade mark. Various products display the mark OBELIX together with the ® symbol. The ® symbol also frequently appears with the combination ASTERIX and OBELIX, next to each individual word. When assessing whether the public establishes a harmful link, the EUIPO only considered that the products were too different. This is incorrect. The assessment must take all relevant circumstances into account, including how unique and distinctive the mark is and the extent of its reputation. The earlier decision is therefore annulled, and the Board of Appeal must reconsider the case. Lesson for businesses: when using descriptive or semi-descriptive marks, or the titles of books and names of characters, use the ® symbol to indicate that the name is being used as a trade mark.
