Taking Unfair Advantage: Article 8(5) EUTMR and the Protection of Trademarks with Reputation

When a brand has built substantial reputation in the EU, the standard “likelihood of confusion” test under Article 8(1)(b) EUTMR is no longer the only protection available. Famous and well-known marks benefit from a broader form of protection under Article 8(5) of Regulation 2017/1001 — the so-called “reputation” or “anti-dilution” ground. This expanded protection allows blocking later trademark applications even for different goods and services, where the later mark would take unfair advantage of the earlier mark’s reputation or cause it detriment. The framework has been particularly important for technology companies, fashion houses, and global brands defending their commercial identity against opportunistic registrations.

This guide explains the framework, with the Apple v. Pear-shaped logo case study illustrating the test. For trademark coexistence generally, see our coexisting trademarks guide. For the standard likelihood of confusion test, see our Mr. Kebab vs Mister Kebap case study.

Article 8(5) EUTMR: the framework

Under Article 8(5) of Regulation 2017/1001 (current EUTMR), an earlier trademark with reputation can block a later EU trademark application where:

• The earlier mark has reputation in the EU (for EUTMs) or in a Member State (for national marks);
• The later mark is identical or similar to the earlier mark;
• The later mark covers goods or services that may be identical, similar, or even different from those of the earlier mark;
• The use of the later mark without due cause would take unfair advantage of, or be detrimental to, the earlier mark’s distinctive character or reputation.

The critical innovation of Article 8(5): protection extends across goods and services categories. Where Article 8(1)(b) requires similar goods/services, Article 8(5) does not. A famous luxury fashion brand can therefore block trademark applications even in entirely different categories where reputation transfer would benefit the new applicant unfairly.

The three grounds of protection

Article 8(5) covers three distinct types of harm:

• Unfair advantage (free-riding): the later mark exploits the earlier mark’s reputation for its own commercial benefit, without justification;
• Detriment to distinctive character (dilution by blurring): the later mark weakens the earlier mark’s capacity to identify a single source — even where consumers do not confuse the marks;
• Detriment to reputation (dilution by tarnishment): the later mark damages the earlier mark’s image, typically through association with inferior, controversial, or inconsistent products.

The opponent need only demonstrate one of these three grounds — though many oppositions invoke multiple grounds simultaneously.

What constitutes reputation

“Reputation” under Article 8(5) requires more than mere registration or use — it requires that the mark be known by a significant part of the relevant public. The CJEU has established the framework in General Motors v Yplon (C-375/97, 1999) and subsequent cases:

• Knowledge threshold: significant part of the relevant public (not necessarily majority);
• Geographic scope: for EUTMs, reputation in a substantial part of the EU; for national marks, reputation in the Member State;
• Evidence required: market share, intensity of use, duration of use, geographic extent, promotional investment, public recognition;
• Relevant public: consumers of the specific goods/services concerned.

Evidence typically includes consumer surveys, sales data, advertising expenditure, media coverage, and industry recognition. The burden of proof rests with the opponent — and the evidence requirements are substantial.

Apple v. Pear-shaped logo: the case study

The Apple Inc. opposition to pear-shaped logo trademark applications has provided a recurring framework illustration. In multiple cases at EUIPO and national level, Apple has opposed pear-shaped logos for various goods and services, arguing under Article 8(5) that:

• The Apple logo has overwhelming reputation in EU markets;
• Pear-shaped logos evoke the Apple aesthetic through fruit imagery in similar stylistic conventions;
• The pear-shaped applications would take unfair advantage of Apple’s brand value through aesthetic association;
• Even where pear-shaped logos cover different categories, the reputation-based protection extends.

EUIPO Boards of Appeal and the General Court have produced varied outcomes — some pear-shaped applications have been refused based on Apple’s reputation, others have been allowed where the similarity was too weak or the alleged unfair advantage not established. The case line illustrates that Article 8(5) is not automatic: the opponent must demonstrate concrete reputation, sufficient similarity, and tangible unfair advantage or detriment.

The Apple-Pear cases demonstrate how reputation-based opposition works in practice — and the analytical difficulty of evaluating “unfair advantage” when the connection between the contested marks operates at the level of stylistic association rather than direct copying.

Italian framework

Italian trademark law parallels the EU framework through:

• Italian Industrial Property Code (D.Lgs. 30/2005), particularly Article 20 on protection scope;
• Article 20 paragraph 1(c) CPI: protection against use of identical or similar signs for different goods/services, where the earlier mark has reputation and the use takes unfair advantage or causes detriment;
• Italian implementation of the Trade Mark Directive 2015/2436;
• UIBM opposition procedures and litigation in specialised IP chambers.

For Italian famous marks (Gucci, Prada, Ferrari, Fiat, Ducati, Bulgari, and many others), Article 20(1)(c) CPI provides robust national protection against unauthorised reputation transfer. The framework operates alongside Article 8(5) EUTMR for EU trademarks. For Italian luxury fashion, see also our parodying fashion labels guide on the specific parody intersection.

Practical strategy for reputation-based opposition

For trademark owners considering Article 8(5) opposition or defence:

• Document reputation systematically: maintain ongoing records of market share, sales, advertising, media coverage, awards, and consumer recognition;
• Conduct periodic consumer surveys: independent surveys provide the strongest evidence of public knowledge;
• Monitor for free-riding: trademark watching services and brand protection programmes identify potential infringers;
• Cross-category analysis: identify categories beyond the registered classes where reputation extension may be at risk;
• “Due cause” assessment: even where unfair advantage exists, defendants may argue legitimate justification (parody, comparison, criticism);
• Settlement strategy: many Article 8(5) oppositions resolve through coexistence agreements with specific restrictions;
• Multi-jurisdictional coordination: famous mark protection typically requires coordinated EU and national strategy.

How DANDI supports trademark owners

DANDI.media supports Italian and international trademark owners on reputation-based trademark protection:

• Trademark portfolio reputation documentation and strategy;
• EUIPO and UIBM oppositions under Article 8(5) and Article 20(1)(c) CPI;
• Defence against reputation-based opposition;
• Coexistence agreement drafting;
• Trademark watching and monitoring services coordination;
• Cross-border enforcement coordination;
• Litigation in Italian specialised IP chambers and EU courts.

For consultation, book directly with Avv. Claudia Roggero or Avv. Donato Di Pelino.

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