Well-known trademarks: the EU General Court usefully points out that protection extends beyond product similarity (TUE, October 29, 2025, case T-565/24)

In a judgment handed down on October 29, 2025 (Case T-565/24), the Court of Justice of the European Union reiterated the scope of protection afforded to well-known trademarks, which enjoy protection beyond the goods and services designated in their wording.
Chronology of the case.
In March 2022, the American company ITRON Inc., a world leader in energy and water solutions, opposed the application for the European word mark “ITRON” by the French company Advanced Sanitairy. The opposition targeted all products in classes 9, 11, and 20, based on earlier European word marks “ITRON” designating class 9 in particular.
The legal grounds invoked were, in particular, those provided for in Article 8(1)(b) and 8(5) of Regulation 2017/1001 on the European Union trademark (EUTM).
In its decision of June 19, 2023, the EUIPO Opposition Division considered that “the opponent has not proven that its earlier ‘ITRON’ trademarks enjoy a reputation in the European Union,” thus ruling out the application of Article 8(5) EUTMR relating to well-known trademarks. However, on the basis of Article 8(1)(b), the opposition was partially upheld for certain goods in class 9.
This was a harsh assessment, particularly for the remaining goods in class 9, which were considered dissimilar even though they belonged to the same class. The opponent, agreeing with this finding, lodged an appeal and submitted additional evidence to establish the reputation of its trademarks within the European Union.
In its decision of August 26, 2024, the Board of Appeal upheld the decision of the Opposition Division on the basis of highly questionable reasoning.
Although it acknowledged the average reputation of the earlier trademark “ITRON” for certain of the goods in Class 9 in several European countries, the Board of Appeal did not find a link between the signs—even though they were identical—on the grounds that “the distance between the contested goods in Classes 9, 11, and 20 and the well-known earlier smart meters and the provision of software solutions for smart meters, for which the reputation of earlier trademark No. 1 has been established, outweighs all other factors that could contribute to establishing a link, such as the similarity between the disputed trademarks and the degree of reputation of earlier trademark No. 1 (paragraph 107).
In doing so, the Board of Appeal renders meaningless the extended protection provided for in Article 8(5) of the EUTMR, which is specifically intended to extend beyond the scope of similar goods or services.
By giving decisive weight solely to the dissimilarity of the goods, the Board of Appeal failed to recognize the requirement for an overall assessment, which is at the heart of European case law.
Before the General Court, EUIPO finally agreed with the opponent’s position, implicitly recognizing the need to correct a reasoning that was incompatible with the specific regime for well-known marks.
In its decision, the General Court held that “by justifying the absence of a link between the marks in conflict solely on the basis of the difference between the goods and services in question, without examining the unique or essentially unique character of the earlier mark No. 1 and, consequently, by failing to assess all the relevant factors […], the Board of Appeal erred in law ” (para. 50).
The Court thus usefully reaffirms that the existence of a link in the mind of the public must be assessed globally, taking into account, in particular, the reputation and strong distinctiveness of the sign, and that a serious likelihood of harm (dilution, free-riding or damage to reputation) is sufficient, without the need for immediate concrete harm.

Equipe BCUBE