Obelix and trademark protection

© Les Editions Albert-René Sarl / Uderzo

Obelix, Asterix’s best friend, is one of the main characters in the Asterix comic books.

The Asterix & Obelix series is popular all over the world and has been translated into many languages. There is a huge range of Asterix merchandise: mugs, bags and wigs to name a few. There’s even an Asterix theme park in France. We’ll start with a spoiler: the fate of our comic hero Obelix takes a turn for the worse in this blog.

Given the parks, cartoons and hordes of merchandise, it is only logical that both Asterix and Obelix have trademark protection. It became clear that this not an unnecessary luxury when a Polish company filed an application to use Obelix as a trademark for weapons. It’s rather a grim situation. The average Roman was terrified of Obelix’s superpowers, and now this Polish company also brought out the big guns − first in opposition proceedings (which the publisher of the Asterix series lost) and then in an invalidation action.

The Polish company first argued in its defence that it is forbidden by law to bring legal proceedings for the same matter twice. Without this rule, companies would drag each other to court over and over again in the hope that the legal costs would eventually drive the other party to bankruptcy. In this particular case, the French publisher of Asterix filed an opposition, followed by an invalidation action. The European Trademarks Office did not agree with this argument as the article on which it is based only applies to identical proceedings: you cannot, for example, bring two invalidation actions.

The next issue was the use of the OBELIX trademark. This is where things become interesting. Everyone agrees that OBELIX is famous. But is it also a trademark? In other words, is this name also used to indicate the origin of specific products to distinguish them from those of other companies? In order for this to be the case, there must be a clear connection between the trademark and the products. This is always a difficult point for cartoon and film characters. Previously, the European Trademarks Office ruled that Dr No (from James Bond) was not a trademark. It did not see any evidence of trademark use in this case. Although the Office noted that Obelix appears on products, it did not consider it as a distinguishing feature (there are no labels or tags bearing the name Obelix). A cartoon with the name Obelix is also not enough to qualify as trademark use. The invalidation action got rejected.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.