Well-Known Trademarks. Is there or not a perimeter to the broader protection?

Published by Toyin Dodo-Williams (Jurist / Trademark and Design Attorney) · 1 July 2025
Tags: #trademark, #trademarks, #well, known, trademarks, #protection, trademarks, protection, #broader, protection, #opposition, #EUTM

The broader protection of well known trademarks is ensured under Article 8(5) of European Union Regulation No 2017/1001 (EUTMR), according to which a trademark 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 or services covered by the mark applied for are not similar to those for which the earlier trademark with a reputation has been registered.

The logic behind the above provision lies in the fact that, in addition to its function of indicating origin, trademark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. In other words trademark 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, such as, for example, luxury, lifestyle, exclusivity, etc.

Consequently the messages which are conveyed inter alia by a trademark with a reputation or the messages which are associated with it confer on that trademark a significant value which deserves the protection, particularly because, in most cases, the reputation of a trademark is the result of considerable effort and investment on the part of its proprietor.

Indeed, this particular validity of the aforementioned provision against trademarks applications designating dissimilar goods and services denotes the broader protection. Curiously, this validity has often been interpreted as implying that, in applying the broader protection to a highly reputable trademark, proof of the existence of a link between the designated goods and services claimed by the well-known trademark and those designated by the contested sign is never required. Such interpretation would imply that, the perimeter of the validity of the extended protection is unlimited against the contested goods and services.

So, is there or not a perimeter to the extended protection of well-known trademarks? That such interpretation is indeed incorrect has been the conclusion reached by the General Court of the European Union in recent cases of a similar nature, in which it rejected requests for extended protection to

and

trademarks in oppositions against the registration of

[1],

[2] and

[3] trademarks.

The

[4] case was concluded with an order dated 22 May 2025, by which the Court of Justice rejected the request for leave to appeal against the judgment of the General Court. The rationale for the rejection of the requests for the extended protection in the above-mentioned cases is explicable through the facts of this last case, which is indeed similar to the others.

Puma SE, filed an opposition against the registration of an EU figurative trademark . The trademark applied for designated the following goods and services: acoustic screens for insulation; bark coverings for sound insulation; soundproofing materials; quilted wadding articles for insulation; acoustic insulation articles and materials; insulation and barrier articles and materials; insulation sheets in class 17 and construction drafting; design and development of diagnostic apparatus; design of building interiors; consultation services relating to interior design; advisory services relating to the planning of premises in class 42.

The opposition was based on the EU figurative trademark , which claimed reputation for goods registered in class 25 corresponding to: Apparel, footwear, headgear. The ground relied on in support of the opposition was the broader protection as set out in Article 8(5) EUTM. To that end, the Opposition Division found that, there was no link between the two trademarks in relation to the goods and services and partially rejected the opposition.

Subsequently, the Board of Appeal upheld the decision of the Opposition Division and dismissed PUMA SE’s appeal. In essence, the Board of Appeal found that, in the light of the specific nature of the goods and services concerned, the significantly different market sectors in which they belong and also the different public to which those goods and services are addressed, no link could be established between the signs at issue, notwithstanding the strength of the earlier mark’s reputation and the similarity of the signs. The Board of Appeal also held that, even if consumers established a link between the signs, there was nothing to indicate that the mark applied for could take unfair advantage of PUMA trademark’s reputation.

PUMA SE appealed to the General Court relying on a single plea in law in support of its action, alleging infringement of Article 8(5) EUTM. In essence, the applicant disputes, the findings of the Board of Appeal relating to the absence of any link between the marks at issue and to the lack of any injury to the distinctive character or the reputation of the earlier mark.

To that effect in the first place, the General Court found that the applicant’s line of argument was based on the erroneous premiss that the Regulation and the case law do not require proof of the existence of a mental link for trademarks enjoying a very high degree of reputation. More specifically, it is apparent from the case-law that the fact that the earlier trademark enjoys a high degree of reputation for certain specific categories of goods or services does not necessarily imply that there is a link between the trademarks at issue.

Furthermore, across all the above mentioned cases, the General Court found that, the existence of such a link in the mind of the relevant public between the trademark applied for and the earlier trademark is an implied essential precondition for the application of the broader protection[5].

To that end, the existence of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case. Although the existence of a similarity between the goods and services covered by the marks at issue does not constitute a condition for the application of the broader protection, nevertheless, the nature and the degree of closeness of the goods or services concerned constitute factors that are relevant in order to assess whether a link between those trademarks exists.

Furthermore, in assessing whether there is a link between the conflicting trademarks, it may be necessary to take into account the strength of the earlier trademark’s reputation in order to determine whether that reputation extends beyond the public targeted by that trademark[6]. Also, other factors may come into play, such as the degree of the earlier trademark’s distinctive character, the degree of similarity between those marks or the fact that the earlier trademark consists of a fanciful word or a word which has a semantic content.

This is true, especially, where the identity or similarity of the signs at issue results from the presence of a word, which has a specific meaning, that meaning could become apparent to the relevant public when the similar mark is used in a commercial context which is fundamentally different from that in which the earlier mark has a reputation. In that regard, it has been accepted that the standard of proof required to establish a link between the marks at issue was more demanding where the earlier mark was composed not of a fanciful word but of a common noun referring to a specific concept, in this case an animal.

For such a link to be found between the conflicting trademarks, it is clearly not necessarily sufficient, the fact that the trademarks at issue are similar to a high degree from visual and phonetic standpoints and identical from a conceptual standpoint, that the earlier trademark enjoys a very high degree of reputation and that it has acquired through use a very high degree of distinctiveness.

Indeed, the fact that the earlier mark is very highly reputed does not mean that a similar trademark will necessarily evoke the trademark with a reputation on the part of the relevant public, irrespective of the commercial context in which that mark is used.

For this reason, the General Court confirmed that, in the particular circumstances of the above mentioned cases, account being taken of both the specificity of the goods and services covered by the trademarks applied for and the sector to which they belonged, and the specificity of the public at which they were aimed, and notwithstanding the strength of the earlier trademark’s reputation, its highly distinctive character and the substantial degree of similarity between the signs at issue, a link would not be made between the trademarks at issue.

As a result, the General Court confirmed that, in the particular circumstances of the present cases, account being taken of both the specificity of the goods and services covered by the mark applied for and the sector to which they belonged, and the specificity of the public at which they were aimed, and notwithstanding the strength of the earlier trademark’s reputation, its highly distinctive character and the substantial degree of similarity between the signs at issue, a link would not be made between the marks at issue.

[1] Case T-30/24 - Puma / EUIPO - Li Puma (Li Puma Design)

[2] Case T-11/24, Puma / EUIPO - Li Puma (LaZZarO by Li Puma).

[3] Case T-69/24 - Puma EUIPO - Puma (puma acoustics).

[4] Case C‑49/25 P

[5] Case T-11/24, Puma v EUIPO - Li Puma (LaZZarO by Li Puma), p.39 and the case-law cited.

[6] Case C-252/07, Intel Corporation Inc. v CPM United Kingdom Ltd, p.53.