By its judgment of 28 January 2026 (Case T-246/25)1, the General Court of the European Union provides a significant illustration of the scope, but also the limits, of the enhanced protection granted to EU trade marks with a reputation, under Article 8(5) of Regulation (EU) 2017/1001.
The dispute arose between the Greek company Ella Hotels and Resorts and Hachette Filipacchi Presse, proprietor of the earlier EU figurative mark ELLE, well-known throughout the European Union for fashion and lifestyle magazines.
The judgment is of particular interest because the opposition was only partially successful: it was upheld for services in Class 44 (beauty, hygiene and health services), but rejected for other services, including advertising and hospitality. This outcome highlights that Article 8(5) does not confer an unlimited monopoly, even for famous marks.
The General Court recalls that Article 8(5) establishes a specific ground of refusal distinct from the likelihood of confusion regime.
A trade mark application may be refused even where the goods or services are dissimilar, provided that:
These conditions are cumulative.
Importantly, the Court reiterates that Article 8(5) does not require any likelihood of confusion: the relevant public need only be capable of making a mental association between the signs.
The applicant challenged the finding that ELLE was reputed in Germany, arguing that its readership represented less than 1% of the German population.
The Court rejects this reasoning. Reputation does not require knowledge by the majority of the population, but rather by a significant part of the relevant public, taking into account the duration of use, market presence and promotional exposure.
Moreover, reputation extends beyond actual purchasers: the general public may be aware of the mark through its visibility in public spaces and media.
A key contribution of the judgment lies in the Court’s validation of the partial rejection of the opposition.
The Board of Appeal, and subsequently the General Court, rejected the opposition for:
while maintaining it for Class 44 services.
This outcome is explained by the central requirement under Article 8(5): the protection of reputed marks is not automatic. Even where reputation and similarity of signs are established, the opponent must still demonstrate that the relevant public will establish a sufficiently meaningful “link” between the marks in the specific commercial context.
In respect of hospitality and restaurant services, the Board of Appeal had found that it was not established that the German consumer would naturally associate a fashion magazine brand, even a prestigious one, with the operation of hotels or restaurants.
The Court notes that, when choosing a hotel or booking a restaurant, the consumer is not necessarily prompted to connect that decision with the image of a fashion magazine. The economic and thematic distance between the sectors was considered too great for a credible transfer of image.
Accordingly, the Court confirms that reputation does not allow the proprietor of a famous mark to prevent registration in all unrelated markets: Article 8(5) only applies where the public is likely to make an association capable of generating unfair advantage or detriment.
By contrast, the Court fully endorses the finding of a link between ELLE magazines and the Class 44 services covered by the contested application, namely hygiene, beauty care and health services.
Fashion magazines do not merely relate to clothing, but more broadly to aesthetics, personal appearance, skincare and well-being. It is therefore plausible that the public may perceive such services as connected to the lifestyle universe conveyed by ELLE.
The Board of Appeal was thus entitled to find a thematic proximity, sufficient to establish the necessary link.
In that context, the use of ELLA RESORTS for beauty and wellness services was capable of benefiting from the power of attraction, prestige and elegance associated with the reputed mark ELLE, thereby creating a risk of unfair advantage.
Finally, the applicant sought to rely on due cause, arguing that “Ella” is a common female first name and pointing to advertisements placed in ELLE-related media.
The Court dismisses these arguments. The evidence was largely subsequent to the reputation acquired by ELLE and did not demonstrate genuine prior trade mark use of “ELLA” as such. In reality, the documents referred to different hotel names (“Elissa”, “Helea”).
The Court reiterates that due cause must be interpreted restrictively and requires serious, genuine use predating the reputed mark’s reputation.
Conclusion
This judgment provides a nuanced reaffirmation of the protective strength of Article 8(5) against parasitic behaviour targeting reputed trade marks.
However, it also confirms an essential limit: reputation does not create an all-encompassing exclusivity across all sectors. The opposition will succeed only where the relevant public is likely to establish a meaningful link and where a plausible transfer of image may result in unfair advantage.
Thus, ELLE could legitimately prevent an extension into the natural field of beauty and wellness (Class 44), but not into the more remote domain of hospitality and restaurant services (Class 43).
1 General Court of the European Union, 8th Chamber, 28 January 2026, Ella Hotels and Resorts monoprosopi AE v EUIPO / Hachette Filipacchi Presse, Case T-246/25.
