Rubinstein v OHMI - Allergan (BOTOLIST) (Intellectual property) [2010] EUECJ T-345/08 (16 December 2010)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

(Community trade mark – Invalidity proceedings – Community word marks BOTOLIST and BOTOCYL – Earlier national figurative and word marks BOTOX – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EC) No 40/94 (now Article 8(5) of Regulation (EC) No 207/2009) – Obligation to state the reasons on which the decision is based – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009))

Helena Rubinstein SNC, established in Paris (France), represented by A. von Mühlendahl and J. Pagenberg, lawyers,

L’Oréal SA, established in Paris, represented by A. von Mühlendahl and J. Pagenberg, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

1 On 6 May 2002, the first applicant, Helena Rubinstein SNC, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The goods in respect of which registration was sought are in Class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Perfumes, eau de toilette; bath and shower gels and salts not for medical purposes; toilet soaps; deodorants for personal use; cosmetics among other creams, milks, lotions, gels and powders for face, body and hands, sun-tanning and after-sun milks, gels and oils (cosmetics); make-up preparations; shampoos; gels, mousses and balms, preparations in aerosol form for hairdressing and haircare; hair lacquers, hair dyes and preparations for bleaching hair; permanent waving and curling preparations; essential oils’.

5 On 2 February 2005, the applicant for a declaration of invalidity, Allergan, Inc., filed an application for a declaration of invalidity of the registration of that Community trade mark in respect of the goods referred to in paragraph 3 above.

6 The application for a declaration of invalidity was based on a number of earlier Community and national figurative and word marks, relating to the sign BOTOX, registered in particular for goods in Class 5 of the Nice Agreement corresponding to the following description: ‘pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain’. The earliest of those marks was registered on 12 April 1991 and the most recent on 7 August 2003.

7 The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009), read in conjunction with Article 8(1)(b) (now Article 8(1)(b) of Regulation No 207/2009) and Article 8(4) and (5) of that regulation (now Article 8(4) and (5) of Regulation No 207/2009).

8 On 28 March 2007, the Cancellation Division rejected the application for a declaration of invalidity.

9 On 1 June 2007, the applicant for a declaration of invalidity filed an appeal before OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Cancellation Division.

10 By decision of 28 May 2008 (‘the first contested decision’), the First Board of Appeal of OHIM allowed that appeal. In particular, it took the view that, although there was no likelihood of confusion between the mark BOTOLIST and ‘the earlier mark’, the application for a declaration of invalidity on the basis of Article 8(5) of Regulation No 40/94 was well founded.

11 On 19 July 2002, the second applicant, L’Oréal SA, filed an application for registration of a Community trade mark with OHIM pursuant to Regulation No 40/94.

13 The goods for which registration was sought are in Class 3 of the Nice Agreement and correspond to the following description: ‘perfumes, eaux de toilette; bath and shower gels and salts not for medical purposes; toilet soaps; deodorants for personal use; cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations; shampoos; gels, mousses and balms, preparations in aerosol form for hairdressing and haircare; hair lacquers; hair-colouring and hair-decolourising preparations; permanent waving and curling preparations; essential oils’.

15 On 2 February 2005, the applicant for a declaration of invalidity filed an application for a declaration of invalidity of the registration of that Community trade mark in respect of the goods referred to in paragraph 13 above.

16 The application for a declaration of invalidity was based on a number of earlier Community and national figurative and word marks, relating to the sign BOTOX and registered in particular for goods in Class 5 of the Nice Agreement corresponding to the following description: ‘pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain’. The earliest of those marks was registered on 12 April 1991 and the most recent on 7 August 2003.

17 The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 52(1)(a) of Regulation No 40/94, read in conjunction with Article 8(1)(b) and Article 8(4) and (5) of that regulation.

18 On 4 April 2007, the Cancellation Division rejected the application for a declaration of invalidity.

19 On 1 June 2007, the applicant for a declaration of invalidity filed an appeal before OHIM, under Articles 57 to 62 of Regulation No 40/94, against the decision of the Cancellation Division.

20 By decision of 5 June 2008 (‘the second contested decision’), the First Board of Appeal of OHIM allowed that appeal. In particular, it took the view that, although there was no likelihood of confusion between the mark BOTOCYL and ‘the earlier mark’, the application for a declaration of invalidity on the basis of Article 8(5) of Regulation No 40/94 was well founded.

25 The applicants put forward two pleas in law in support of their actions. The first plea alleges infringement of Article 8(5) of Regulation No 40/94. The second plea alleges infringement of Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009).

26 A preliminary point to note is that the applicants do not dispute that the applicant for a declaration of invalidity is the owner of an earlier registered mark. They also submit, without being contradicted by OHIM, that the relevant public is composed of members of the general public, and, as far as the mark BOTOX is concerned, the specialised public of health professionals.

27 The applicants maintain that there is no evidence to prove that the mark BOTOX had a reputation as at the filing date of the disputed marks: moreover, it is, in their submission, extremely unlikely that that would be the case, since fewer than three months and a little more than five months elapsed between the registration of Community figurative mark No 2015832 BOTOX on 12 February 2002 and, respectively, the filing of the mark BOTOLIST on 6 May 2002 and that of the mark BOTOCYL on 19 July 2002. The Cancellation Division was therefore right to find that the evidence submitted in that regard by the applicant for a declaration of invalidity was insufficient. Whatever evidence may have been submitted by the applicant for a declaration of invalidity, it does not show that the mark had a reputation as at the filing date of the disputed marks. The data relating to sales in 1999 and 2003 are not referred to in the contested decision and cannot, on their own, support a finding relating to reputation. Most of the evidence relating to media coverage dates from a period after the filing date of the disputed marks. Those which are earlier are inadmissible because they have not been translated into French, which was the language of the proceedings before OHIM. The additional evidence submitted before the Board of Appeal is new and out of time. It should have been found to be inadmissible pursuant to Article 74(2) of Regulation No 40/94 (now Article 76(2) of Regulation No 207/2009). The French translation of one article which appeared in The Guardian newspaper on 3 November 2001 is not in itself sufficient to prove reputation. Furthermore, even though the opinion surveys carried out in 2003 and 2004 may be relevant in showing knowledge on the part of the United Kingdom public of the mark BOTOX during those years, it is not possible, on account of the relatively recent introduction of BOTOX on the markets, to extrapolate those data and apply them to the situation that existed in May or July 2002. Nor are the references made to BOTOX in dictionaries capable of showing the necessary degree of knowledge among the general public since those references are not made on the basis of the knowledge of a particular term or word by the general public. As regards the decision of the United Kingdom Intellectual Property Office of 26 April 2005 in BOTOX v BOTOMASK, the later mark BOTOMASK had been filed on 25 October 2002, was registered for goods in Class 3 and the case was successful for ‘non-surgical beauty products’ and ‘cosmetics’, but not successful for ‘soaps, perfumery, essential oils’. Correct as that decision may be, it is not capable of showing anything other than the fact that the applicant for a declaration of invalidity was in part successful against a mark filed in late October 2002, namely more than three or six months after the filing of the disputed marks.

28 OHIM maintains that the evidence submitted by the applicant for a declaration of invalidity proves that the earlier marks had acquired a massive reputation in respect of ‘pharmaceutical preparations for the treatment of wrinkles’, at least in the United Kingdom on 6 May and 19 July 2002.

29 The applicants submit that the similarities between the marks at issue are not sufficient to create the link necessary to support a finding of infringement of Article 8(5) of Regulation No 40/94. Those similarities are in fact limited to the syllable ‘bot’ or the syllables ‘boto’. The syllable ‘bot’ in the earlier mark is an obvious and clearly understood reference to the active ingredient in the pharmaceutical product, namely the botulinum toxin. As such, that element of the earlier mark does not have any distinctive character. Rather, the inherent distinctiveness of the earlier mark, which in any event is not pronounced, is the result of the combination of the descriptive and non-distinctive element ‘bot’ or ‘boto’ with the surprising ending ‘x’ or ‘ox’. The word ‘botox’ is memorable not because of its beginning, but because of its ending. Compared to BOTOX, the marks BOTOLIST and BOTOCYL are structured differently. The common element is non-distinctive, and the elements in which the marks differ, namely ‘ox’ or ‘x’ as opposed to ‘olist’ and ‘list’ or ‘ocyl’ and ‘cyl’ are sufficient to distinguish the marks so as to avoid the creation of the required link. The mark BOTOX cannot therefore be in conflict with the marks BOTOLIST and BOTOCYL because the element ‘bot’ or ‘boto’ in the earlier mark is descriptive and non-distinctive. The result must be the same, whether or not the later marks also use the element in question in a descriptive or non-distinctive sense. There is no evidence that is sufficient to support the findings that OHIM seeks to defend as regards the existence of the link required by the case-law.

30 OHIM states that, in order for Article 8(5) of Regulation No 40/94 to apply, consumers must establish a link between the marks at issue. Paragraph 42 of the judgment in Case C-252/07 Intel Corporation [2008] ECR I-8823, which was delivered after the adoption of the contested decisions, provides a non-exhaustive list of the relevant criteria to be taken into consideration in making that assessment. A global assessment of those criteria will lead to the conclusion that the strength of the earlier marks, their distinctive character acquired through use and the close nexus existing between most of the goods covered by the marks counterbalance the lower degree of similarity between the signs. It is therefore more than plausible that the public would remember both the earlier word and figurative United Kingdom registrations when purchasing cosmetics bearing the mark BOTOLIST or the mark BOTOCYL. The link between the marks is in fact reasonably strong.

31 The applicants submit that the file does not prove that the use of the marks BOTOLIST and BOTOCYL is likely to be detrimental to, or take advantage of, the distinctive character or reputation of the mark BOTOX. There is no evidence to support the finding made by the Board of Appeal in that regard in the contested decisions. Furthermore, there is no proof that the applicants acted without due cause in filing the disputed marks.

32 OHIM submits that, as regards the unfair advantage taken of the distinctive character or the repute of the earlier trade marks (parasitism), the Board of Appeal considered that use of the marks BOTOLIST and BOTOCYL would take unfair advantage of the earlier marks’ repute because the public would establish a link between the marks and the goods they cover. In the present case, OHIM maintains that the ‘link’ between the marks is sufficiently close to allow a misappropriation of the earlier marks’ repute in the field of cosmetics. A significant section of the public in the United Kingdom is aware of the earlier marks as an anti-wrinkle pharmaceutical treatment. The image with which the earlier marks are associated is therefore that of an anti-aging product. Many cosmetics have or claim to have an anti-aging effect. They aim to conceal wrinkles and other traces left by age. The association with the earlier marks suggests that the applicants’ products have an effect that is comparable to that achieved with BOTOX. In effect, the link made by the relevant public between BOTOLIST and BOTOCYL, on the one hand, and BOTOX, on the other hand, would suggest the promise of an ever-lasting youth. Confronted with cosmetic products bearing those marks, the relevant public will be incited to buy those products on account of the association made with the earlier marks.

33 As regards the detriment caused to the distinctive character of the earlier trade marks (dilution), OHIM submits that the Board of Appeal stated that use of the disputed marks would result in the loss of the unique status of the earlier marks BOTOX, which was the basis of their reputation. The intrinsic distinctive character of the earlier marks originates from the fanciful combination of the two contracted elements ‘bot’ (for ‘botulinum’) and ‘tox’ (for ‘toxin’). As the Board of Appeal stated, the applicants may use descriptive prefixes such as ‘bot’ (for ‘botanic’) or ‘botu’ (for ‘botulism’), but there is no reason for the applicants or any other operator to create a mark whose prefix is the distinctive element ‘boto’. The use of BOTOLIST, BOTOCYL and of other marks beginning with ‘boto’ would result in the loss of attractiveness of the earlier marks because the only element that would ensure a connection between anti-wrinkle preparations and Allergan would be the final letter ‘x’ in BOTOX. The change in the economic behaviour of the public is foreseeable in the sense that the public would no longer associate the element ‘boto’ with Allergan. Its marks would be divested of a substantial part of what constitutes their value. Use of the disputed marks would open the door to further acts of use by other operators which would gradually erode the exclusiveness of the earlier marks, which would be diluted. The risk of dilution would be strengthened by the fact that the applicants registered a number of Community trade marks and that the use of BOTOLIST and BOTOCYL in respect of cosmetics would suggest to consumers that anti-aging effects similar to those obtained with injections of BOTOX can be achieved without medical supervision by means that are possibly less expensive, less hazardous and less painful. Whereas the documentary evidence submitted by the applicant for a declaration of invalidity show that the anti-wrinkle effects of the BOTOX pharmaceutical preparations for the treatment of wrinkles are scientifically proven, the same cannot be said of the applicants’ products.

34 As regards use without due cause, OHIM states that the Board of Appeal found in the contested decisions that there was a lack of due cause within the meaning of Article 8(5) of Regulation No 40/94. The applicants did not submit any legal or factual evidence to cast doubt on that finding although the notion of use ‘without due cause’ is a defence and it is apparent from the apportionment of the burden of proof provided for in Article 74(1) of Regulation No 40/94 that it is for the party who relies on that defence to submit facts in support of its claim.

37 In order to ascertain whether the Board of Appeal infringed Article 8(5) of Regulation No 40/94 in conjunction with Article 52(1)(a) thereof by upholding the appeals and the applications for a declaration of invalidity, it is necessary to assess whether, in the present case, the necessary conditions for those articles to apply are fulfilled.

38 As a preliminary point, it should be noted that the applications for a declaration of invalidity are based on a number of national and Community figurative and word marks relating to the sign BOTOX, almost all of which were registered before the marks applied for, BOTOLIST and BOTOCYL, were filed on 6 June and 19 July 2002 respectively (see paragraph 2 of the contested decisions). It is those marks, and not merely the Community figurative mark No 2015832 BOTOX referred to by the applicants (see paragraph 27 above), which constitute the earlier marks relied on by the applicant for a declaration of invalidity.

39 In that regard, the Board of Appeal implicitly but necessarily took a different approach from that taken by the Cancellation Division, which had based its decisions merely on the registration of the earlier Community trade mark No 2015832 for the figurative sign BOTOX, finding that a reputation had been acquired in respect of both the figurative and the word marks BOTOX registered before 6 May 2002, whether they were Community or national trade marks. That approach on the part of the Board of Appeal may be illustrated by the fact that it does not refer, in the contested decisions, to the figurative element of the abovementioned Community trade mark.

40 Against that background, and as was stated at the hearing, the Court’s examination can be limited to the earlier national marks registered in the United Kingdom for the treatment of wrinkles (both the national word mark No 2255853 relating to the sign BOTOX and the national figurative mark No 2255854 relating to the sign BOTOX, which were registered on 14 December 2000), since that is the territory in respect of which most of the evidence was submitted by the applicant for a declaration of invalidity. The mere fact that a relative ground for refusal is found to exist in one Member State is sufficient to justify the application of Article 8(5) of Regulation No 40/94 (see, to that effect, Case T-172/05 Armacell v OHIM – nmc (ARMAFOAM) [2006] ECR II-4061, paragraph 33). The conditions laid down by that provision will therefore be examined in the light of the perception of United Kingdom consumers.

41 Consequently, having regard to the reasoning set out in the contested decisions on the relative ground for refusal based on Article 8(5) of Regulation No 40/94, it is necessary to ascertain, first, whether the earlier national marks have a reputation in the United Kingdom; secondly, whether the disputed marks are similar to those earlier marks; thirdly, whether the use without due cause of the disputed marks would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks. Since those conditions are cumulative, failure to satisfy one of them is sufficient to render inapplicable the provisions of Article 8(5) of Regulation No 40/94 (see, to that effect, Case T-67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II-1825, paragraph 30).

42 In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (Case C-375/97 General Motors [1999] ECR I-5421, paragraph 31, and SPA-FINDERS, paragraph 41 above, paragraph 34).

43 In the present case, the Board of Appeal made the following statement in paragraph 34 of the first contested decision and in paragraph 35 of the second contested decision:

44 The applicants submit that there is no evidence of such a reputation as at the filing date of the disputed marks on 6 May and 19 July 2002 or that, in any event, the evidence provided does not prove the existence of that reputation (see paragraph 27 above).

45 It is, however, apparent from the examination of the various items of evidence provided by the applicant for a declaration of invalidity in support, first, of the application for a declaration of invalidity, and then of the appeals before the Board of Appeal, that the Board of Appeal did not infringe Article 8(5) of Regulation No 40/94 by finding that the mark BOTOX had a reputation.

46 First, the applicant for a declaration of invalidity provided in its application the volume of sales of the products marketed under the trade mark BOTOX in 14 Member States, namely at that time all the Member States of the European Community with the exception of Luxembourg, from 1999 to 2003. The Board of Appeal refers to that information in paragraph 3 of the contested decisions, in which the relevant facts are summarised. The examination of those data proves that sales of the products marketed under the trade mark BOTOX generated an overall turnover which rose from 2002 (around USD 48 million) to 2003 (around USD 58 million). The United Kingdom is the Member State where sales are highest, with almost 15% of the overall turnover realised between 1999 and 2002. Sales in the United Kingdom rose from USD 2.357 million in 1999 to USD 9.325 million in 2002.

47 Contrary to what the applicants maintain (see paragraph 27 above), those data are referred to in the contested decision and may be taken into consideration as indirect evidence in assessing reputation. Such data give an indication of the sales made within the European Union and make it possible to assess their increase. Furthermore, those data are not the only evidence submitted to establish the reputation of the products sold under the trade mark BOTOX.

48 Secondly, having regard to the fact that the mark BOTOX identifies a pharmaceutical preparation sold under prescription, which may have both therapeutic and cosmetic applications, for which direct advertising to the general public is not possible, the applicant for a declaration of invalidity relied in its applications on promotion of the mark BOTOX to practitioners by providing various scientific articles dating from 1999 and 2001. The Board of Appeal refers to that promotion in paragraph 3 of the contested decisions. The documents produced on that point are articles published in 1999 and 2001 in English in scientific journals.

49 Those articles in fact serve to substantiate the claim made by the applicant for a declaration of invalidity on that point. Moreover, that promotional activity to practitioners is not disputed as such by the applicants, who merely claim before the Court that those articles, like other items of evidence, are inadmissible because they have not been translated into French, which was the language of the proceedings before OHIM (see paragraph 27 above and paragraph 54 below).

50 Thirdly, in addition to that promotional activity, the applicant for a declaration of invalidity referred in its applications to significant media coverage in respect of the general public and within the European Union of the products marketed under the mark BOTOX. The Board of Appeal refers to that intense media coverage in paragraph 3 of the contested decisions. The documents produced on that point are a number of press articles, published after 2001 in the United Kingdom newspaper The Guardian or in publications distributed in the United Kingdom and in other countries (‘The Botox Boom’ was the cover story in Newsweek magazine on 13 May 2002; ‘New uses for a poison turned wrinkle warrior’ appeared in the newspaper The International Herald Tribune of 3 March 2003), and articles published in German, Italian, French, Dutch and in Spanish. A translation into French of some passages from the article published on 3 November 2001 in The Guardian newspaper was attached as an Annex to the appeal lodged by the applicant for a declaration of invalidity.

51 To dispute the evidential value of those documents, the applicants submit that most of those items date from a period after the filing date of the mark BOTOLIST on 6 May 2002 or of the mark BOTOCYL on 19 July 2002 and that they should not therefore be taken into consideration to establish reputation. They also submit, as regards inter alia the few documents that date from a period prior to the filing dates of the disputed marks, that all the documents which are not in or have not been translated into French, the language of the proceedings before OHIM, are inadmissible. In any event, the translation into French of some passages of the article published in The Guardian on 3 November 2001 is not in itself sufficient to prove distinctive character or reputation (see paragraph 27 above).

52 In that regard, although the reputation of an earlier mark must be established as at the filing date of the application for the disputed mark, documents bearing a date after that date cannot however be deprived of evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (see, by analogy, order in Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 31; judgment of 17 April 2008 in Case C-108/07 P Ferrero Deutschland v OHIM and Cornu, not published in the ECR, paragraph 53; Case T-262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II-5959, paragraph 82).

53 In the present case, the press articles produced do prove that there was significant media coverage as regards the products marketed under the trade mark BOTOX as at the filing date of the disputed marks. The article from The Guardian of 3 November 2001 refers to an already well-established movement which allows anyone with a moderate amount of money to obtain the same cosmetic treatment as that given to a number of celebrities. Other articles, published a few days or weeks after the filing date of the mark BOTOLIST (6 May 2002) or before the filing date of the mark BOTOCYL (19 July 2002), confirm the reputation that BOTOX had with the general public. The article which is the cover story in Newsweek magazine of 13 May 2002 illustrates that.

54 Furthermore, as regards the allegedly inadmissible nature of all the articles which were not provided in or translated into French, it must be pointed out that the very existence of articles taken from a scientific publication or the general-interest press constitutes a relevant factor in establishing the reputation of the products marketed under the trade mark BOTOX with the general public, irrespective of the positive or negative content of those articles. The evidential value of those documents cannot be dependent as such on their translation into the language of the proceedings before OHIM. Such a translation may prove useful, for example, where there is doubt on the content of the article, but it cannot be set up as a condition of admissibility of a document provided as evidence. Furthermore, the applicants, who did not, before the Board of Appeal, complain that the Cancellation Division had agreed to take into account the items of evidence which were not translated into French, do not state in what way, besides the date of publication, the various articles submitted by the applicant for a declaration of invalidity do not prove the reputation of the products marketed under the trade mark BOTOX with the general public.

55 Fourthly, the applicant for a declaration of invalidity submitted in its applications that the trade mark BOTOX is known to the extent that that word has been included in a number of English-language dictionaries, which recognise that word as a trade mark. The Board of Appeal refers to that information in paragraph 3 of the contested decisions. The references initially made on that point are to the 2003 editions of two dictionaries. Other references were annexed to the appeals before the Board of Appeal, namely the 2002 editions of three other dictionaries.

56 Contrary to what the applicants maintain (see paragraph 27 above), the references made in the 2002 and 2003 editions of a number of dictionaries published in the United Kingdom do constitute one of the pieces of evidence which may establish the reputation of the trade mark BOTOX in that country or with the English-speaking public of the European Union. The inclusion of a word in a dictionary is the expression of a fair amount of recognition on the part of the public.

57 Fifthly, the applicant for a declaration of invalidity attached in its response to the observations submitted by the applicants on its applications for a declaration of invalidity a copy of a decision of 26 April 2005 of the United Kingdom Intellectual Property Office deciding on an application for a declaration of invalidity of the registration of the trade mark BOTOMASK, which is registered in the United Kingdom for cosmetics. That action was based inter alia on a number of earlier BOTOX trade marks. In its decision, the United Kingdom Intellectual Property Office relies on the reputation of the trade mark BOTOX in the United Kingdom to find in favour of the applicant for a declaration of invalidity as regards certain classes of goods.

58 In their observations on that item of evidence, the applicants state that such a decision proves only that the applicant for a declaration of invalidity was in part successful against a mark filed in late October 2002, namely more than three or six months after the filing of the disputed marks (see paragraph 27 above). Those observations do not concern the content of the decision of the United Kingdom Intellectual Property Office. Having regard to the case-law cited in paragraph 52 above, they do not therefore call into question the significance which that decision may have for establishing the reputation of the trade mark BOTOX in the United Kingdom.

59 Sixthly, in an Annex to the appeals before the Board of Appeals, the applicant for a declaration of invalidity provided the witness statement of one of its company directors, in which it was stated that, in the United Kingdom market for the reduction of facial lines and wrinkles, the market share of BOTOX was 74.3% in December 2003, that of DYSPORT was 24.7% and that of NEUROBLOC was 1%. That statement also states that BOTOX was the third most known facial anti-wrinkle treatment in 2003 and 2004, after prescription and non-prescription anti-wrinkle creams and lotions, and that, of the total number of consumers, 29% in 2003 and 33% in 2004 showed spontaneous awareness of the product.

60 The applicant for a declaration of invalidity also provided as an Annex to those appeals a market survey carried out in September and October 2004 in the United Kingdom to compare awareness of non-surgical aesthetic products among the public, namely products derived from the botulinum toxin, including BOTOX and its main competitor DYSPORT. That survey shows that, although only 0.19% of the female population had tested the product BOTOX in 2003, 29% of that population was aware of its existence. The degree of awareness reached 75% in 2003 among the section of the public which was aware of at least one facial line treatment. In 2004, 86% of that section of the public was unaware that BOTOX was also intended for uses other than the treatment of facial lines.

61 To dispute the evidential value of those documents, the applicants submit that that evidence should have been found to be inadmissible pursuant to Article 74(2) of Regulation No 40/94 because it was new and out of time. They also maintain that, even though the market survey may be relevant as regards the situation in the United Kingdom in 2003 and 2004, that is not sufficient to establish the situation which existed in May or July 2002 (see paragraph 27 above).

62 In that regard, it must be stated that under Article 74(2) of Regulation No 40/94, ‘[OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned’. That provision confers a broad discretion on the Board of Appeal. In the present case, given that the Board of Appeal did not expressly decide on the admissibility of the items of evidence annexed to the appeal of the applicant for a declaration of invalidity before the Board of Appeal, it implicitly but necessarily found that they were admissible. In accepting such documents, the Board of Appeal thus merely made use of the broad discretion which is conferred on it by Article 74(2) of Regulation No 40/94. Contrary to the applicants’ submission, the Board of Appeal was not required to declare inadmissible the witness statement of the director of the applicant for a declaration of invalidity or the market survey annexed to the appeals lodged before it.

63 Furthermore, as has already been stated as regards the criticism made of other items of evidence provided in annexes to the applications for a declaration of invalidity, although the reputation of an earlier mark must be established as at the filing date of the application, documents bearing a date after that date are not however deprived of evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date (see paragraph 52 above). In the present case, having regard to the fact that a reputation is, in general, acquired progressively, it must be held that the awareness on the part of the general public in the United Kingdom of the trade mark BOTOX and the market shares of those products were not appreciably lower in 2002 than the levels established in 2003 or in 2004. The examination of those data makes it possible to observe that, although there has been an increase in awareness from one year to the next, which is the expression of an increasingly widespread reputation, that increase remains relatively small.

64 In conclusion, having regard to all the evidence submitted by the applicant for a declaration of invalidity, the Board of Appeal did not infringe Article 8(5) of Regulation No 40/94 in finding that the trade mark BOTOX had a reputation as regards ‘pharmaceutical preparations for the treatment of wrinkles’ in the United Kingdom as at the filing date of the disputed marks, 6 May or 19 July 2002.

65 To satisfy the condition concerning similarity of marks set out in Article 8(5) of Regulation No 40/94, it is not necessary to prove that there exists, on the part of the relevant section of the public, a likelihood of confusion between the earlier mark with a reputation and the disputed mark (Case C-408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, paragraphs 27 and 31; Intel Corporation, paragraph 30 above, paragraph 58; Case T-181/05 Citigroup and Citibank v OHIM – Citi (CITI) [2008] ECR II-669, paragraphs 64 and 65). It is sufficient for the degree of similarity between the earlier mark with a reputation and the disputed mark to have the effect that the relevant section of the public establishes a link between them even though it does not confuse them. The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case (CITI, paragraphs 64 and 65, and, by analogy, Adidas-Salomon and Adidas Benelux, paragraphs 29 to 31).

66 Since the contested decisions were adopted, the Court of Justice has specified what may be the relevant factors to take into account in the global assessment of the link referred to in Adidas Salomon and Adidas Benelux, paragraph 65 above. Among those factors the Court cited: the degree of similarity between the competing marks; the nature of the goods or services for which the competing marks are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of the likelihood of confusion on the part of the public (Intel Corporation, paragraph 30 above, paragraphs 41 and 42).

67 As regards the degree of similarity between the competing marks, the Court of Justice stated that the more similar they were, the more likely it was that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. However, the Court made clear that the mere fact that the competing marks are similar is not sufficient for it to be concluded that there is a link between those marks. It is possible that those marks are registered for goods or services in respect of which the relevant sections of the public do not overlap (Intel Corporation, paragraph 30 above, paragraphs 44 to 46).

68 It is in the light of that case-law that the contested decisions should be examined. In the present case, the Board of Appeal stated the following in paragraphs 35 to 41 of the first contested decision and in paragraphs 36 to 42 of the second contested decision:

69 In the present cases, the absence of likelihood of confusion is not disputed. It is not necessary, moreover, to establish such a likelihood of confusion in order to satisfy the conditions set out in Article 8(5) of Regulation No 40/94 (see paragraph 65 above). The discussion is therefore limited to whether it may be concluded on the basis of the reasoning followed by the Board of Appeal in the contested decisions that the condition relating to the existence of a certain degree of similarity between the earlier marks and the disputed marks such that the public establishes a link is satisfied.

70 In that regard, it must be pointed out that the Board of Appeal’s reasoning is based on the idea that the relevant public will notice that the trade marks BOTOLIST and BOTOCYL begin with ‘boto’, just like the trade mark BOTOX which it knows well. For the Board of Appeal, the prefix ‘boto’ is not descriptive. It is unusual and cannot be regarded as an abbreviation of ‘botulinus’ or ‘botulinum’.

71 According to the applicants, the Board of Appeal should have taken into consideration the first syllable ‘bot’, which is descriptive and not distinctive. That assertion is based on the claim that the syllable ‘bot’ is an ‘obvious and clearly understood’ reference to the active ingredient of the pharmaceutical preparation, namely the botulinum toxin.

72 There is no basis for such a claim. Even if the sign BOTOX were to refer to the active ingredient of that pharmaceutical preparation, it would then be necessary to break it down, first, into ‘bo’ for ‘botulinum’ and, secondly, into ‘tox’ for ‘toxin’. The syllable ‘bot’ has no particular meaning and no reason is put forward to explain why it should be preferred to the prefix ‘boto’, which was taken into consideration by the Board of Appeal.

73 Furthermore, even if the sign BOTOX could be broken down into ‘bo’ for ‘botulinum’ and ‘tox’ for ‘toxin’ in reference to the active ingredient which it uses, that word would then have to be considered to have acquired a distinctive character, inherent or through use, in the United Kingdom at the very least.

74 In paragraph 63 of the decision in BOTOX v BOTOMASK of 26 April 2005 (see paragraph 57 above), for example, the United Kingdom Intellectual Property Office stated in that regard that ‘[i]n the present case it seems to be that the applicant’s BOTOX trade mark is fully distinctive in an inherent context, notwithstanding its reputation’ and that ‘[o]n the basis of reputation and inherent distinctiveness it is entitled to a wide penumbra of protection’.

75 Similarly, in the course of the examination of the likelihood of confusion, the Board of Appeal stated in paragraph 25 of the contested decisions that it accepted the argument of the applicant for a declaration of invalidity that its anti-wrinkle product for injecting, which is marketed under the trade mark BOTOX, was known by everyone. The Board of Appeal was right to find, having regard to the evidence submitted in the examination of the data relating to the reputation of the earlier marks (see paragraph 51 et seq. above), that its ‘renown is due to the very intensive media coverage to which that medicinal product, often presented as a “miracle product” in the world press, has given rise’ and that ‘through that media coverage the public has also been made familiar with the active ingredient of the medicinal product, namely the botulinum toxin, the English name of which inspired the trade mark: botulinum toxin’. The Board of Appeal also stated in paragraph 26 of the contested decisions that ‘the name BOTOX is immediately associated by the public with that anti-wrinkle medicinal product and with the undertaking which manufactures and markets it’.

76 Lastly, the size of the market share of BOTOX in the United Kingdom, 74.3% in 2003, like the degree of awareness of the trade mark of 75% among the specialised public accustomed to pharmaceutical treatments against wrinkles, is sufficient to substantiate the existence of a considerable degree of recognition on the market, which the Board of Appeal refers to in the contested decisions when it states, for example, in paragraphs 38 and 39, that the relevant public knows the trade mark BOTOX well.

77 The applicants’ arguments are not therefore capable of calling into question the reasoning followed in the contested decisions in establishing the degree of similarity between the marks at issue.

78 Furthermore, in so far as the mere similarity between the competing marks is not sufficient for it to be concluded that there is a link between those marks since it is possible that they are registered for goods or services in respect of which the relevant sections of the public do not overlap (see paragraph 67 above), it must be pointed out that the Board of Appeal acknowledged in the contested decisions that the goods for which the marks at issue are registered are different, whilst highlighting a certain overlap, which it referred to as a ‘low degree of similarity’ as regards the ‘pharmaceutical preparations for the treatment of wrinkles’ of the applicant for a declaration of invalidity and the ‘cosmetics among other creams’ of the applicants (see paragraphs 18 to 21 of the contested decisions). In the course of the examination under Article 8(5) of Regulation No 40/94, the Board of Appeal thus concluded – rightly – that those goods, although different, nevertheless concern ‘related market sectors’ (see paragraphs 38 and 44 of the first contested decision and paragraphs 39 and 45 of the second contested decision).

79 Consequently, the Board of Appeal was correct in finding that, having regard to the various items of evidence referred to in the contested decisions, the public would naturally be led to establish a link between the marks BOTOLIST and BOTOCYL and the mark with a reputation BOTOX, before even associating it with ‘botulinum’.

80 First of all, as to whether the applicants have established that there is due cause for the use of the marks BOTOLIST and BOTOCYL, it must be stated that they have not adduced any evidence in that respect. It is for the applicants to set out the content of such ‘due cause’, which is a ground of defence.

81 The third of the conditions set out in Article 8(5) of Regulation No 40/94 (see paragraph 41 above) falls to be assessed with regard to three distinct types of risk, namely that use of the trade mark applied for without due cause, first, would adversely affect the distinctive character of the earlier mark, second, would cause detriment to the repute of the earlier mark, and, third, would take unfair advantage of the distinctive character or repute of the earlier mark (see CITI, paragraph 65 above, paragraph 75 and the case-law cited).

82 Having regard to the wording of Article 8(5) of Regulation No 40/94, the existence of one of the above three types of risk is sufficient for that provision to apply. The proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must, however, adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see CITI, paragraph 65 above, paragraphs 76 to 78 and the case-law cited).

83 In Intel Corporation, paragraph 30 above, the Court set out the relevant criteria for carrying out such an analysis, which are applicable by analogy to the present case. First, it must be considered that the types of injury referred to in Article 8(5) of Regulation No 40/94, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them. The more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark. It follows that, like the existence of a link between the competing marks, the existence of one of the types of damage referred to in Article 8(5) of Regulation No 40/94, or a serious likelihood that such injury will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the criteria listed above. As regards the strength of the reputation and the degree of distinctive character of the earlier mark, the stronger the earlier mark’s distinctive character and reputation the easier it will be to accept that detriment has been caused to it (see, by analogy, Intel Corporation, paragraph 30 above, paragraphs 66 to 69).

84 Secondly, the fact that the earlier mark has a huge reputation for certain specific types of goods or services, that those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, that the earlier mark is unique in respect of any goods or services and that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark to mind, is not sufficient to establish the existence of unfair advantage and/or detriment within the meaning of Article 8(5) of Regulation No 40/94. In particular, the existence of a link between the competing marks does not dispense the proprietor of the earlier trade mark from having to prove actual and present injury to its mark, for the purposes of Article 8(5) of Regulation No 40/94, or a serious likelihood that such an injury will occur in the future (see, by analogy, Intel Corporation, paragraph 30 above, paragraphs 70 and 71).

85 Thirdly, as regards, more particularly, detriment to the distinctive character of the earlier mark, it is not necessary for the earlier mark to be unique in order to establish such injury or a serious likelihood that it will occur in the future. A trade mark with a reputation necessarily has distinctive character, at the very least acquired through use. Therefore, even if an earlier mark with a reputation is not unique, the use of a later identical or similar mark may be such as to weaken the distinctive character of that earlier mark. However, the more ‘unique’ the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character. Furthermore, a first use of an identical or similar mark may suffice, in some circumstances, to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future. Lastly, detriment to the distinctive character of the earlier mark is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future. It is immaterial, however, for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark (see, by analogy, Intel Corporation, paragraph 30 above, paragraphs 72 to 78).

86 It is in the light of that case-law that the content of the contested decisions must be examined. In the present case the Board of Appeal pointed out, in paragraphs 42 to 44 of the first contested decision and in paragraphs 43 to 45 of the second contested decision, the following:

87 In view of the content of the contested decisions, the Board of Appeal is rather terse when it sets out the effects of the use of the disputed marks. In essence, the reason relied on relates to the fact that the relevant public will necessarily see a link between the marks at issue and the products they designate, namely, on the one hand, the ‘pharmaceutical preparations for the treatment of wrinkles’ marketed under the trade mark BOTOX and, on the other, the ‘cosmetics among other creams’ marketed under the trade marks BOTOLIST and BOTOCYL.

88 However, that explanation has been the subject of significant arguments in the course of the administrative proceedings and before the Court. The applicant for a declaration of invalidity thus stated that both the mark BOTOLIST and the mark BOTOCYL, which were registered together by the L’Oréal group, actually seek to take advantage of the distinctive character and repute acquired by BOTOX for the treatment of wrinkles, which will have the effect of decreasing the value of that mark. Those risks are sufficiently serious and real to justify the application of Article 8(5) of Regulation No 40/94. At the hearing, the applicants thus acknowledged that, even though their products did not contain the botulinum toxin, they nevertheless intended to take advantage of the image which was associated with that product, which is to be found in the trade mark BOTOX, a trade mark which is unique in that regard (see, to that effect, Intel Corporation, paragraph 30 above, paragraph 56).

89 It is apparent from the foregoing that the first plea must be rejected in its entirety.

90 The applicants claim that, as regards the findings that, first, the earlier mark BOTOX has a reputation and, secondly, the use of the disputed marks takes unfair advantage of, and is detrimental to, the distinctive character and repute of the earlier mark, the contested decision does not contain a sufficient statement of reasons because it is entirely unclear on which findings of fact or legal arguments it is based. As regards the failure to state the reasons relating to reputation, the mere reference to the arguments of the applicant for a declaration of invalidity, as referred to in paragraphs 3, 11 and 13 of the contested decisions, cannot justify the absence of a finding of fact. The Board of Appeal should have made findings of fact before concluding that a mark has a reputation within the meaning of Article 8(5) of Regulation No 40/94. In the absence of such findings the applicants are not in a position to defend themselves before the Court and the Court is not in a position to judge whether the conclusions reached by the Board of Appeal are indeed supported by findings of fact. Those arguments apply mutatis mutandis as regards the failure to state the reasons relating to detriment. It is not possible to understand how the use of BOTOLIST and BOTOCYL takes unfair advantage of, or is detrimental to, the distinctive character and repute of the trade mark BOTOX.

91 OHIM submits that although the statement of reasons is relatively succinct, it contains all the information necessary to comprehend the contested decision and to challenge its legality before the European Union judicature.

92 Pursuant to the first sentence of Article 73 of Regulation No 40/94, OHIM is required to give reasons for its decisions. The giving of reasons has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the European Union judicature to exercise its power to review the legality of the decision (see Case T-129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II-811, paragraph 18 and the case-law cited).

93 In the present case, the Board of Appeal set out in the contested decisions the reasons which make it possible to understand why the trade mark BOTOX has a reputation. Those reasons are apparent both from the summary of the facts relevant for the analysis and from the legal analysis in the strict sense carried out by the Board of Appeal in the contested decisions.

94 Although the statement of reasons for the contested decisions is terse so far as concerns the effects of the use without due cause of the marks applied for, the reasons are nevertheless apparent from paragraphs 42 to 44 of the first contested decision and paragraphs 43 to 45 of the second contested decision. In that regard, the applicants have all the relevant information to enable them to dispute that statement of reasons in the present case. Furthermore, even though the legality of the contested decisions must be examined in the light of the relevant case-law, the Board of Appeal cannot be criticised for not having taken into consideration in the contested decisions, which were adopted on 28 May and 5 June 2008, the content of the judgment in Intel Corporation, paragraph 30 above, which was delivered on 27 November 2008.

97 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicants have been unsuccessful, they must be ordered to pay the costs, in accordance with the forms of order sought by OHIM.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Rubinstein v OHMI - Allergan (BOTOLIST) (Intellectual property) [2010] EUECJ T-345/08 (16 December 2010) URL: http://www.bailii.org/eu/cases/EUECJ/2010/T34508.html Cite as: [2010] EUECJ T-345/08, [2010] EUECJ T-345/8

Court of Justice of the European Communities (including Court of First Instance Decisions)