Così Trib UE 13.05.2026, T-24/25, Les Éditions Albert René c. EUIPO – WORKS 11 MICHAŁ LUBIŃSKI, nella lite sul nome Obelix tra l’editore e un utilizzatore polacco non autorizzato per armi.
<< 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.>>
Come giustamente osserva Marcel Pemsel in IPKat , è sempre ostico proteggere come marchio i personaggi di opere dell’ingegno: è infatti tutt’altro che scontato che vengano percepiti come indicatori della fonte aziendale di provenienza.