Most opposition decisions involving famous brands follow a familiar pattern. The earlier mark enjoys a substantial reputation, the later sign incorporates its distinctive element, and the outcome rarely comes as a surprise. This is particularly true where the earlier mark is as well-known as FANTA.

The recent EUIPO Opposition Division decision in FANTA v FANTA UNIVERSE (Opposition No B 3 202 171) is different. Not because Coca-Cola succeeded. Few practitioners would have expected a different result in relation to clothing bearing the word FANTA. The more interesting question is whether the reasoning adopted by the Opposition Division reaches beyond the facts of the case and reflects a more ambitious approach to the protection of reputed marks.

That question does not arise from the likelihood of confusion analysis. It emerges much later in the decision, almost unnoticed, in the discussion of Article 8(5) EUTMR. It accepts that consumers are likely to establish the necessary Intel link between FANTA and retail services relating to toys, figurines, games and stationery. At the same time, it refuses to reach the same conclusion for books, CDs and DVDs, notwithstanding that all of those services formed part of the same fantasy-themed commercial concept advanced by the applicant.

The distinction is not based on the similarity of the signs. Nor does it stem from the strength of the reputation enjoyed by FANTA, which the Division had no hesitation in recognising for soft drinks. The relevant public also remains essentially the same. The decisive factor lies elsewhere. The decision repeatedly refers to what consumers have come to expect from the marketplace. According to the Opposition Division, today’s consumers are accustomed to seeing globally recognised brands extend into merchandising, licensing and promotional products. Toys, figurines and stationery therefore fall within a commercial environment in which a famous brand may naturally expand. Books and pre-recorded media, on the other hand, were treated differently because the evidence was considered insufficient to demonstrate that consumers would expect a comparable commercial connection.

The facts themselves were unremarkable. The application covered a figurative sign consisting of the words FANTA UNIVERSE, accompanied by a planetary device and the tagline “For wizards and otaku”. The specification was confined to clothing and retail and wholesale services connected with fantasy comic books, anime, manga, literature, films and television series. The applicant was clearly not attempting to market beverages. Nor did the specification seek to capitalise on Coca-Cola’s core business. The dispute was instead centred on merchandising and lifestyle products, precisely the type of commercial environment in which the boundaries of trade mark protection have become increasingly difficult to define.

Against that background, the Opposition Division had little difficulty concluding that the common element FANTA would dominate the overall impression of the later sign. The reasoning is nevertheless noteworthy for the attention devoted to the additional elements. The Division did not simply describe “Universe” as weak. It undertook an unusually detailed linguistic analysis, explaining why the English word would be readily understood across the European Union. References were made to equivalent terms in several Member States, including French, Spanish, German, Dutch, Polish, Czech and Romanian, before concluding that the word would merely evoke the idea of a broad or all-encompassing collection of products. The accompanying planetary device was treated in exactly the same way, reinforcing that concept rather than creating an independent commercial impression.

Whether one agrees with that assessment is almost beside the point. What is striking is the extent to which the Opposition Division was prepared to explain why the element lacked distinctive character. Decisions frequently conclude that terms such as collection, world, studio or universe possess limited distinctive value. Far less frequently do they attempt to justify that conclusion through a detailed discussion of language, consumer perception and contemporary commercial usage. That analysis became significant because it shaped everything that followed.

Having concluded that Universe carried little trade mark significance, the Division was left with a sign in which FANTA inevitably became the principal badge of origin. From that point onwards, the additional verbal and figurative elements no longer performed the traditional function of distancing the later mark from the earlier right. Instead, they were viewed as embellishments surrounding the only element capable of indicating commercial origin.

That conclusion, in turn, explains an observation which might otherwise appear almost incidental. The Opposition Division accepted that consumers are accustomed to encountering variations of established brands through changes in typography, colour schemes or the addition of descriptive verbal and figurative elements identifying new product lines or sub-brands. On that basis, it considered it entirely plausible that the average consumer could perceive FANTA UNIVERSE not as an independent commercial sign, but as another expression of the FANTA brand architecture.

This part of the reasoning is unlikely to attract much controversy in cases involving identical goods. It becomes considerably more interesting, however, once the decision moves beyond Article 8(1)(b) and applies a similar understanding of commercial behaviour to the assessment of reputation under Article 8(5).

The real novelty of the decision emerges only once the likelihood of confusion analysis has been left behind. Having accepted that the remaining Class 35 services were dissimilar to the goods for which the earlier mark enjoyed protection, the Opposition Division turned to Article 8(5). At that stage, the discussion could no longer revolve around confusion or mistaken origin. The question became whether the relevant public, when encountering FANTA UNIVERSE, would nevertheless call the earlier mark to mind.

Rather than treating the existence of a link as the natural consequence of the reputation of FANTA and the obvious similarity between the signs, the Opposition Division examined the commercial relationship between the respective sectors with a degree of granularity that is rarely seen in opposition decisions.

For retail and wholesale services relating to stationery, greeting cards, comic strips, figurines, toys and games, the Division had little difficulty concluding that the required mental association would arise. The reasoning was not that those products were somehow close to soft drinks. Quite the opposite. It rested on the proposition that consumers have become accustomed to seeing globally recognised brands expand beyond their core business through licensing, merchandising and promotional collaborations. In those sectors, encountering a famous beverage brand was no longer presented as exceptional, but as part of ordinary commercial life.

The analysis changed abruptly when the decision reached books, CDs and DVDs. Those services were also linked to the same fantasy universe promoted by the applicant. They targeted the same broad public. They formed part of the same commercial concept and were offered under exactly the same sign. Yet none of that proved sufficient.

According to the Opposition Division, the evidence did not establish that consumers would ordinarily expect a soft drink brand to expand into those particular sectors. The single example relied upon by Coca-Cola, its collaboration with Warner Bros. in connection with the Beetlejuice Beetlejuice release, demonstrated a promotional campaign, but not an established pattern of commercial exploitation capable of shaping consumer expectations.

The decision does not merely ask whether consumers know that famous brands license their trade marks. It asks a more specific question: what do consumers expect this particular type of famous brand to license?

It moves the analysis away from the abstract reputation of the earlier mark and towards the economic reality surrounding it. The relevant enquiry is no longer confined to the strength of the reputation itself, but extends to the commercial behaviour that consumers associate with that reputation. Whether that approach reflects a natural application of the Intel criteria or introduces an additional evidential consideration is open to discussion. Either way, it represents one of the most thought-provoking aspects of the decision.

There is another reason why this aspect of the decision deserves attention. The assessment of the link has never required the proprietor of the earlier mark to prove that it has already entered every commercial sector in which protection is sought. Reputation operates precisely because a famous mark is capable of transcending the goods for which it is registered. The economic value of such a mark lies not only in its existing commercial activities, but also in its ability to expand beyond them.

That does not mean Article 8(5) offers unlimited protection. The Court of Justice has consistently rejected any notion of a monopoly based solely on fame. A reputed mark is protected because consumers are capable of making an association between the earlier and the later sign, and because that association may lead to one of the forms of injury recognised by the Regulation. The existence of the association itself, however, has always been assessed globally, taking into account all the circumstances of the particular case.

Against that background, one may legitimately ask whether the present decision risks introducing an additional layer into that assessment. The reasoning appears to assume that consumer expectations are shaped not only by the reputation of the earlier mark and the similarity of the signs, but also by evidence demonstrating how undertakings operating in the relevant market usually exploit their brands.

There is an intuitive logic to that proposition. Consumers undoubtedly expect certain famous brands to appear on clothing, toys or promotional merchandise. Decades of licensing agreements have made that a commercial reality. Equally, it would be difficult to argue that the average consumer would today be surprised to encounter a well-known food or beverage brand collaborating with a film studio, a sports franchise or a video game publisher.

The difficulty lies elsewhere. Once the assessment becomes dependent upon demonstrating recognised patterns of commercial expansion, it becomes considerably less predictable.

How much evidence would be sufficient? Would a handful of licensing agreements establish consumer expectations across an entire sector? Would evidence relating to one famous beverage brand also be relevant for another? Should the analysis focus on the practices of the proprietor itself, or on the behaviour of the market as a whole?

Yet they are likely to arise again if future opposition decisions adopt the same analytical framework. This is particularly true for brand owners whose commercial strategy relies heavily on licensing rather than direct production. Modern trade mark portfolios frequently extend into sectors that would once have appeared commercially remote. Luxury fashion houses operate cafés and hotels. Automotive manufacturers license watches, luggage and furniture. Entertainment companies market cosmetics, household goods and financial services. Consumers have become accustomed to seeing famous brands travel across markets in ways that would have been difficult to imagine only a generation ago. Drawing principled boundaries around those expectations is therefore unlikely to become any easier.

Ultimately, FANTA UNIVERSE is unlikely to be remembered because Coca-Cola prevailed. The outcome itself sits comfortably within established trade mark principles. It reflects an increasingly sophisticated understanding of the way modern brands operate. Reputation is no longer viewed in isolation from the commercial environment in which it exists. Licensing, merchandising and cross-sector collaborations are treated not as exceptional marketing exercises but as part of the context in which consumers perceive and evaluate trade marks.

Trade mark law cannot ignore commercial reality, particularly where some of the world’s most valuable brands derive a substantial part of their economic value from activities extending well beyond the goods for which they first became known.

At the same time, commercial reality is not static. Consumer expectations evolve rapidly, often more quickly than judicial or administrative practice. Product categories that once appeared commercially remote may become entirely ordinary within a matter of years. Twenty years ago, relatively few consumers would have expected a soft drink brand to collaborate with a global entertainment franchise, release limited-edition collections inspired by blockbuster films or engage with gaming communities. Today, such collaborations form part of everyday marketing strategy.

That raises a broader question. If consumer expectations themselves are constantly evolving, should the assessment under Article 8(5) depend upon identifying established patterns of commercial expansion? Or should it remain focused on the broader enquiry formulated by the Court of Justice: whether, in the light of all the circumstances, the relevant public will establish the necessary mental association between the two signs?

Those questions extend well beyond FANTA. They concern the way in which reputation will be assessed in an economy where brands increasingly function as cultural assets rather than simple indicators of origin, and where commercial expansion is no longer the exception but, for many businesses, the rule.

What seems more certain is that proprietors of reputed marks, and those seeking to coexist alongside them, will pay closer attention to the commercial assumptions that increasingly underpin the legal analysis. In that respect, FANTA UNIVERSE may prove to be more influential than its relatively straightforward outcome would initially suggest.

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