In the fast-moving world of branding, where a name, color, or sound can be worth millions, trademarks do more than distinguish goods—they convey stories, emotions, and trust. But not all trademarks are created equal. Some rise above the crowd, earning a reputation so strong that they deserve protection even outside their original market or without formal registration.
This is where the concepts of reputed and well-known trademarks come into play under European Union law. They offer powerful legal tools for brand owners—but also come with high expectations for evidence and clarity.
The Strength Behind a Name: What Makes a Trademark "Reputed"?
When we think of trademarks with a reputation, iconic names like LEGO, L'Oréal, or iPod often come to mind. These brands go beyond indicating the origin of a product—they carry prestige, emotional connection, and consumer loyalty.
Under Article 8(5) of the EU Trade Mark Regulation (EUTMR), such trademarks receive extended protection. Unlike the standard trademark rules that focus on preventing confusion between similar goods, Article 8(5) protects against any use that might exploit or harm a mark's image, even when there's no overlap in the products or services involved.
To benefit from this protection, however, a few boxes must be checked:
- The earlier trademark must be registered and reputed within the EU or at least one Member State.
- The later mark must be identical or similar enough for consumers to be misled between the two.
- The use must take unfair advantage of the older mark's image or cause detriment to its distinctiveness or reputation.
- There must be no due cause—no legitimate reason—for using the later mark.
Earning the Reputation: Proof Matters
Claiming that a trademark has a reputation isn't enough—you have to prove it. And proving it means numbers. Evidence typically includes:
- Market share and sales volume
- Geographic spread and duration of use
- Advertising investment, media coverage, and surveys
- Expert analysis of the brand's perceived quality or image
What About Unregistered Marks? Use the "Well-Known" Trademark
You don't always need a registration to have rights. Under Article 8(2)(c) EUTMR, which mirrors Article 6 bis of the Paris Convention, a mark can still block new trademark applications if it's considered well-known in a particular EU country.
The criteria here are just slightly different:
- Recognition in the relevant public—even if limited to a specific sector
- Historical and geographic extent of use
- Promotion through advertising, events, or media exposure
- Association of value or quality with the mark
Lessons from the Field: Case Studies
- Yellow Label: Though "Yellow Label" wasn't registered as a trademark, Veuve Clicquot successfully argued for its well-known status in the UK.
- PREDATOR: The EUIPO accepted that the PREDATOR brand had well-known status for sports goods, even if it wasn't registered for other categories.
- KICKERS: Despite outdated survey evidence and procedural errors, the brand still proved its well-known status.
Strategic Takeaways for Brand Owners
- Think beyond registration
- Gather evidence early and often
- Be proactive
Reputed and well-known trademarks are more than legal term. They
offer an important layer of protection for businesses that have
built a name worth defending.
Understanding the legal mechanics behind these marks—and
knowing how to leverage or challenge them—can make the
difference between brand erosion and brand elevation.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
