A well-known trade mark and a trade mark with reputation are related but not identical legal concepts. In the EUTMR system they rest on different legal bases and may carry different scopes of protection. Distinguishing between these two regimes matters when filing an opposition and building a strategy for protecting an earlier right before EUIPO.
Below is where the line falls between the two regimes, what facts must be proved under each, and whether EUIPO operates a separate procedure for "recognising" a mark as well known.
Well-Known Trade Mark: Legal Definition
The concept of the well-known trade mark originates in Article 6bis of the Paris Convention. That provision dates to 1925 and was introduced precisely to close a gap: to protect a mark that consumers in a specific country are actually familiar with, even where the mark is not formally registered there.
In the EUTMR system, a mark that is well known in a member state within the meaning of Article 6bis of the Paris Convention may constitute an earlier right under Article 8(2)(c) EUTMR and serve as a basis for opposition against a later application under the conditions set out in the Regulation.
The key distinction from ordinary registration: registration is not required. A well-known mark may have legal significance without an entry in any register — provided the party relying on it can demonstrate the fact of its being well known among the relevant public in the territory of a specific member state.
No provision requires the mark to be known "worldwide" or necessarily beyond a single country. It is sufficient for the mark to be well known in the particular member state where protection is claimed.
Trade Mark with Reputation: Legal Basis
A trade mark with reputation is a separate regime of extended protection. Article 8(5) EUTMR provides the corresponding relative ground in opposition proceedings; the same ground may be relied upon in invalidity proceedings through Article 60(1)(a) EUTMR. For the purpose of prohibiting use by a third party, the relevant regime is set out in Article 9(2)(c) EUTMR. Unlike a well-known trade mark, the earlier mark here must be registered: Article 8(5) applies to a registered earlier mark within the meaning of Article 8(2) EUTMR.
Simply asserting that a brand is "well known" is not sufficient for this provision to apply. EUIPO and the courts examine, among other things, the following elements:
- the reputation of the earlier mark in the relevant territory;
- identity or similarity of the signs;
- the existence in the mind of the relevant public of a link between the signs — this is not the same as a likelihood of confusion;
- at least one of the forms of detriment or unfair advantage provided for in the provision.
The absence of even one of these elements results in protection being denied under Article 8(5), even where the earlier mark is objectively well known in the market.
Article 8(5) also provides for the possibility of use where there is due cause. Where the applicant of the later mark relies on due cause, they must substantiate and prove the circumstances justifying the use of the sign in question.
How a Well-Known Trade Mark Differs from a Trade Mark with Reputation
Legal basis. For a well-known trade mark — Article 6bis of the Paris Convention and Article 8(2)(c) EUTMR. For a trade mark with reputation — Article 8(5) EUTMR in opposition proceedings before EUIPO and Article 60(1)(a) EUTMR in invalidity proceedings; for prohibiting use by a third party — Article 9(2)(c) EUTMR.
Whether registration is required. A well-known mark may be protected without registration — provided its being well known in the relevant territory is demonstrated. Article 8(5), by contrast, applies exclusively to registered marks. Where a mark is not registered, the possibility of relying on it as an earlier right must be assessed against other applicable EUTMR grounds, including the rules on well-known marks.
What must be proved. Well-known character and reputation are related but not identical concepts. The former concerns the level of recognition among the relevant public in a specific member state. The latter concerns the knowledge threshold established in CJEU case law: the earlier mark must be known to a significant part of the public for the goods or services concerned. The legislation does not set a fixed percentage of recognition that automatically confirms either status.
Territory. Territorial requirements are assessed separately for each legal basis. For a well-known mark, the relevant territory is the specific member state where protection is claimed. For the reputation of an earlier EUTM, the relevant territory is the European Union — though proof of reputation in every individual member state is not required: a substantial part may suffice. For an earlier national mark, the relevant member state is assessed. Neither basis requires proof of global or international recognition.
Dissimilar goods and services. One important feature of Article 8(5) is that its application is not limited to identical or similar goods and services. Protection may extend to dissimilar goods or services — but it does not arise automatically from the brand's popularity: the other conditions for the application of the provision must also be proved.
A general reference to the brand's overall recognition is therefore insufficient: the argument must be built around a specific form of detriment or unfair advantage as provided for in Article 8(5).
How Well-Known Character or Reputation Is Proved
There is no fixed list of mandatory evidence. The competent body — the Opposition Division, the Board of Appeal, or a court — assesses evidence in its totality, not against a formal checklist.
Depending on the specific case and the legal basis relied upon, relevant evidence may include the mark's market share, the duration and volume of its use, the geographic spread of sales, the intensity of advertising campaigns and the level of promotional expenditure, sales data, consumer survey results, and independent media coverage documenting the level of awareness of the mark among the relevant public.
None of these indicators is assessed in isolation: the competent body takes into account all relevant circumstances and the totality of the evidence submitted. The legislation does not set a fixed percentage of recognition that automatically confirms reputation.
Equally, there is no established minimum period of use after which a mark automatically acquires well-known or reputed status. Each case is assessed individually, on the basis of the evidence submitted.
Must the Mark Be Known Throughout the EU?
No. The assertion that a mark "must be recognised not only in one country but also beyond its borders" is legally incorrect and corresponds to none of the provisions discussed here.
For a well-known trade mark under Article 8(2)(c) EUTMR, the relevant territory is the specific member state in which that earlier right operates. A mark may be well known in one member state and entirely unknown in another — this does not deprive it of well-known status where that recognition has actually been demonstrated.
For reputation under Article 8(5) EUTMR , the territorial criterion is tied to the type of earlier mark. For an EUTM, the relevant territory is the European Union — though proof of reputation in every individual member state is not required. For a national mark, the relevant territory is the member state concerned. In Case C-375/97, General Motors (Chevy), the CJEU articulated the general approach under which reputation need not exist throughout the entire relevant territory — a substantial part may be sufficient.
In other words, the territorial test is always tied to the specific legal basis and type of earlier right — not to a single universal standard of "international recognition."
What Additional Protection Reputation Confers
Article 8(5) EUTMR allows the proprietor of a reputed registered mark to oppose a later application even where the goods or services are not similar — that is, without needing to prove a likelihood of confusion, as in the classic regime under Article 8(1)(b). Instead, it must be shown that the relevant public establishes a link between the signs — an independent requirement, distinct from likelihood of confusion.
The provision covers three independent forms of detriment or benefit.
Unfair advantage arises where the applicant of the later sign effectively free-rides on the attractiveness or reputation of the earlier mark — "riding on its coat-tails" by transferring to their own goods the associations the earlier mark's proprietor created.
Detriment to distinctive character (dilution, blurring) is the weakening of the earlier mark's ability to identify the goods or services for which it is registered, as a result of the dilution of its identity and recognition in the mind of the public.
Detriment to repute (tarnishment) is harm to the image of the earlier mark, where the later sign is used in a context that devalues or compromises the reputation the earlier mark's proprietor has built over the years.
For any of these three scenarios to engage the provision, the applicant of the later mark must also be shown to lack due cause. Where due cause is established, Article 8(5) does not apply even where formal similarity and proved reputation are both present.
The simplified assertion that "the proprietor of a famous mark can prohibit any similar sign in other categories" is legally imprecise: the protection operates only where a specific form of detriment or benefit is proved — not as a general monopoly over the sign beyond the classes of registration.
Can a Well-Known Trade Mark Be Registered at EUIPO as a Separate Status?
No. EUIPO has no separate procedure analogous to filing an EUTM application, by which a mark would receive a standalone permanent status as a "well-known trade mark."
Well-known character and reputation are not registered in advance as an abstract status — they are proved each time in the context of specific proceedings: an opposition, invalidity proceedings, or court litigation on infringement. This is not a one-time "acquisition" of a protected status: well-known character or reputation must be demonstrated in a specific set of proceedings by reference to the relevant date determined by the applicable legal basis.
A particular note of caution is warranted for Ukrainian readers: the model under which a national authority may officially recognise a trade mark as well known and issue a corresponding document does not operate in the EUIPO system. That logic should not be automatically transposed to EUIPO procedures — a body of evidence that succeeded in one jurisdiction does not guarantee recognition of well-known character or reputation within the EUTMR framework.
Practical Conclusions
Reputation or well-known character significantly affects the scope of a mark's legal protection — but it is not an automatic privilege of a popular brand. The difference between a well-known trade mark and a trade mark with reputation is a difference in legal basis, registration requirements, territorial test, and type of evidence — not a matter of terminology.
In any specific case — whether filing an opposition, defending against one, or assessing the risk of conflict with an earlier right — it is important from the outset to correctly identify the earlier right, the legal basis, and the facts on which the claim rests: different bases carry different conditions for application and for proof.
Where the task is to assess evidence of reputation or well-known character for a specific mark, to prepare an opposition on the basis of such an earlier right, or to defend against a similar claim by an opponent — this is methodical work with facts and EUIPO practice, not a formality. The patent attorneys of Dr. Emil Benatov & Partners analyse the available evidence, map it against the requirements of the applicable provision, and formulate a position for the specific proceedings.
