ROBLOX vs. pesticides: what the EU says about trademark protection beyond your own market
Parents of gaming children know it all too well: Roblox is a phenomenon in digital gaming.
What started as an online game environment has grown into an ecosystem with millions of daily users and a strong position among a young audience. That broad recognition played a role in a recent opposition by Roblox against an application for the identical trademark “ROBLOX” for pesticides and other pest control products.
Roblox is well known, but is it so well known that it can block a trademark for pesticides? Games and pesticides obviously have nothing to do with each other. Yet the opposition was fully upheld.
The Opposition Division of the European Union Intellectual Property Office (EUIPO) acknowledged that the goods are not similar, but that proved not to be decisive. Because ROBLOX is a well-known trademark, the broader protection of Article 8(5) EUTMR applies: protection against free-riding, dilution, and damage to reputation, even outside the trademark’s own market.
The legal key lies in whether the public makes a “link” between the marks. This link does not have to involve confusion, but rather a mental association. In this case, that link was quickly established. The sign is identical, the mark is distinctive and imaginative, and it has a strong reputation. As a result, the average consumer - even when faced with entirely different products such as pesticides - will immediately recognize the sign and associate it with the well-known platform. The use of the sign therefore takes unfair advantage of the reputation of the well-known ROBLOX trademark.
The decision shows how far the protection of a well-known trademark can extend. Even for products that are substantively far removed from gaming and entertainment services, a link may still be found when the mark is strong and distinctive enough. At the same time, there is also a limit. Such a link is less likely to be established for more common or descriptive marks, or where the signs are less similar. But where a trademark is both well known and highly distinctive, trademark owners enjoy very broad protection.
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.