Rubinstein and L'Oreal v OHIM (Appeal) [2012] EUECJ C-100/11

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(Appeal - Community trade mark - Regulation (EC) No 40/94 - Article 8(5) - Community word marks BOTOLIST and BOTOCYL - Community and national figurative and word marks BOTOX - Declaration of invalidity - Relative grounds for refusal - Damage to reputation)

1 By their appeal, Helena Rubinstein SNC ('Helena Rubinstein') and L'Oréal SA ('L'Oréal') seek the setting aside of the judgment of 16 December 2010 in Joined Cases T-345/08 and T-357/08 Rubinstein and L'Oréal v OHIM - Allergan (BOTOLIST and BOTOCYL) ('the judgment under appeal'), by which the General Court of the European Union dismissed (i) the action brought by Helena Rubinstein for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 May 2008 (Case R 863/2007-1) relating to cancellation proceedings between Allergan, Inc. ('Allergan') and Helena Rubinstein (Case T-345/08) and (ii) the action brought by L'Oréal for annulment of the decision of the First Board of Appeal of OHIM of 5 June 2008 (Case R 865/2007-1) relating to cancellation proceedings between Allergan and L'Oréal (Case T-357/08).

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, the dates of the facts of the present dispute mean that this remains governed by Regulation No 40/94.

3 Paragraph 5 of Article 8 of Regulation No 40/94, which is entitled 'Relative grounds for refusal', provides:

4 Paragraph 1(a) of Article 52 of Regulation No 40/94, which is entitled 'Relative grounds for invalidity', provides that a Community trade mark is to be declared invalid on application to OHIM 'where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled'.

5 Paragraphs 1, 2 and 3 of Article 63 of Regulation No 40/94, which is entitled 'Actions before the Court of Justice' provide:

6 Article 73 of Regulation No 40/94 provides that decisions of OHIM must state the reasons on which they are based and may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

7 Article 115(2) of Regulation No 40/94 provides that the languages of OHIM are English, French, German, Italian and Spanish. Article 115(5) provides that a notice of opposition and an application for revocation or invalidity must be filed in one of the languages of OHIM.

8 Rule 38(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides:

9 On 6 May 2002, Helena Rubinstein filed an application with OHIM under Regulation No 40/94 for registration of the word sign 'BOTOLIST' as a Community trade mark. L'Oréal filed a similar application on 19 July 2002 with regard to the word sign 'BOTOCYL'.

10 The goods in respect of which registration was sought fall within Class 3 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, 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.'

11 The Community trade marks BOTOLIST and BOTOCYL (collectively, 'the disputed marks') were registered on 14 October 2003 and 19 November 2003 respectively.

12 On 2 February 2005, Allergan applied for a declaration that the registration of the disputed marks was invalid in respect of the goods referred to in paragraph 10 above.

13 The applications for a declaration of invalidity were based on a number of earlier Community and national figurative and word marks, relating to the sign 'BOTOX' and registered chiefly 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 had been registered on 12 April 1991 and the most recent on 7 August 2003.

14 The grounds relied on in support of those applications 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.

15 By decisions of 28 March 2007 and 4 April 2007, the Cancellation Division rejected both applications for a declaration of invalidity.

16 On 1 June 2007, Allergan filed a notice of appeal with OHIM against each of those two decisions of the Cancellation Division.

17 By decisions of 28 May 2008 and 5 June 2008 ('the contested decisions'), the First Board of Appeal of OHIM upheld the two appeals. In particular, it found that, although there was no likelihood of confusion between the disputed marks and the earlier mark, the applications for a declaration of invalidity on the basis of Article 8(5) of Regulation No 40/94 were well founded.

18 By applications received by the Registry of the General Court on 22 August 2008 and 1 September 2008 respectively, Helena Rubinstein and L'Oréal brought actions for the annulment of the contested decisions.

19 By order of 11 May 2010 of the President of the Third Chamber of the General Court, Cases T-345/08 and T-357/08 were joined for the purposes of the oral procedure and the judgment.

20 In support of their applications, Helena Rubinstein and L'Oréal relied on two identical pleas in law in each case: (i) infringement of Article 8(5) of Regulation No 40/94 and (ii) infringement of Article 73 of that regulation.

21 With regard to the first plea, the General Court observed in paragraphs 38 to 41 of the judgment under appeal, in the course of its preliminary observations, that the applications for a declaration of invalidity were based on a number of national and Community figurative and word marks relating to the sign 'BOTOX', almost all of which had been registered before the marks applied for, BOTOLIST and BOTOCYL, were filed on 6 May 2002 and 19 July 2002 respectively.

22 The General Court noted that the Board of Appeal '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'. According to the General Court, that approach on the part of the Board of Appeal could be illustrated by the fact that, in the contested decisions, it did not refer to the figurative element of the Community trade mark BOTOX.

23 In that context, the General Court found, in paragraph 40 of the judgment under appeal, that it could limit its examination to the two earlier national marks registered on 14 December 2000 in the United Kingdom for the treatment of wrinkles and relating to the sign 'BOTOX' ('the earlier marks'), since the United Kingdom was the territory in respect of which most of the evidence had been submitted by Allergan and in so far as 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.

24 The General Court accordingly stated, in paragraph 41 of the judgment under appeal, that it would ascertain whether the conditions for the application of Article 8(5) of Regulation No 40/94 were met in the case before it, that is to say: (i)'whether [the earlier marks] have a reputation in the United Kingdom'; (ii)'whether the disputed marks are similar to those earlier marks'; and, lastly, (iii) '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'. The General Court added that, since those conditions are cumulative, failure to satisfy one of them was sufficient to render inapplicable Article 8(5) of Regulation No 40/94.

25 First of all, regarding the repute of the earlier marks, the General Court undertook in paragraphs 46 to 63 of the judgment under appeal an examination of the various evidence produced by Allergan in support of the applications for a declaration of invalidity and the appeals before the Board of Appeal: the volume of sales of the products marketed under the trade mark BOTOX from 1999 to 2003 in 14 Member States; the promotion of that mark in articles published in English in scientific journals in 1999 and 2001; the significant media coverage since 2001, particularly in the English press, of products marketed under that mark; the inclusion of the word 'BOTOX' in a number of English language dictionaries, which recognise this word as a trade mark; a decision of 26 April 2005 of the United Kingdom Intellectual Property Office on an application for a declaration of invalidity of the registration in the United Kingdom of the trade mark BOTOMASK for cosmetics; a witness statement from a director of Allergan; and a market survey carried out in the United Kingdom in September and October 2004.

26 As regards, specifically, the admissibility of the English-language press articles, which was disputed by Helena Rubinstein and L'Oréal before the General Court on the ground that they had been published after the date on which the disputed marks had been filed, the General Court referred, in paragraph 52 of the judgment under appeal, to the line of case-law establishing that, '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.'

27 Similarly, in paragraph 54 of the judgment under appeal, the General Court rejected the arguments put forward by Helena Rubinstein and L'Oréal to the effect that the articles published in scientific journals and in the general-interest press were inadmissible because they had not been translated into French, the language of the proceedings before OHIM. The General Court found that the very existence of those articles constituted 'a relevant factor in establishing the reputation of the ... mark BOTOX with the general public, irrespective of the positive or negative content of those articles.'

28 As regards the argument put forward by Helena Rubinstein and L'Oréal to the effect that the decision of 26 April 2005 of the United Kingdom Intellectual Property Office was inadmissible because it postdated the date on which the disputed marks had been filed, the General Court rejected that argument on the basis of the case-law cited in paragraph 52 of the judgment under appeal.

29 As regards the argument by which Helena Rubinstein and L'Oréal claimed that the witness statement of the director of Allergan and the market survey were inadmissible because that evidence was first lodged before the Board of Appeal, the General Court pointed out in paragraph 62 of the judgment under appeal 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', which meant that the Board of Appeal had a broad discretion. The General Court found that, as the Board of Appeal had not expressly decided on the admissibility of those items of evidence, it implicitly but necessarily found that they were admissible.

30 In paragraph 64 of the judgment under appeal, the General Court found that, having regard to all the evidence submitted by Allergan, the Board of Appeal had not infringed Article 8(5) of Regulation No 40/94 in finding that, as at the filing date of the disputed marks, the trade mark BOTOX had a reputation in the United Kingdom as regards 'pharmaceutical preparations for the treatment of wrinkles'.

31 Secondly, as regards the similarity of the marks at issue, the General Court considered in paragraphs 69 to 79 of the judgment under appeal whether the Board of Appeal had not erred in law in finding that there was a certain degree of similarity between the earlier marks and the disputed marks, such that the public would establish a connection between those marks.

32 In essence, the General Court upheld the reasoning of the Board of Appeal, which had taken into consideration, for the purposes of assessing the similarity of the marks at issue, the fact that the prefix 'boto' is common to those marks. According to the General Court, the syllable 'bot' has no particular meaning and, contrary to the assertion made by Helena Rubinstein and L'Oréal, does not refer to the botulinum toxin, the active ingredient of the pharmaceutical product sold by Allergan. The General Court added that no particular reason had been given to explain why it was preferable to take into consideration the syllable 'bot' rather than the prefix 'boto' taken into consideration by the Board of Appeal.

33 The General Court observed that, 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 sign would then have acquired a distinctive character, inherent or through use, in the United Kingdom at the very least.

34 The General Court also found, in paragraph 76 of the judgment under appeal, that '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'.

35 According to the General Court, the Board of Appeal was right to conclude that the goods covered by the marks at issue - albeit different, since Allergan markets pharmaceutical products for the treatment of wrinkles, whereas Helena Rubinstein and L'Oréal market cosmetic products - concerned 'related market sectors'.

36 Consequently, the General Court found that the Board of Appeal had acted correctly in finding that the relevant public would naturally be led to establish a link between the disputed marks and the mark with a reputation - BOTOX - even before associating it with 'botulinum'.

37 Thirdly, as regards the assessment of the effects on the earlier marks of the use of the disputed marks, the General Court observed in paragraph 81 of the judgment under appeal that, in that respect, there are three distinct types of risk. First, the use of the trade mark applied for without due cause may adversely affect the distinctive character of the earlier mark. Secondly, that use may also cause detriment to the repute of the earlier mark. Lastly, the holder of a trade mark applied for may, through the use of its mark, take unfair advantage of the distinctive character or repute of the earlier mark. The presence of one of those three types of risk is sufficient for Article 8(5) of Regulation No 40/94 to apply.

38 Whilst acknowledging, in paragraph 87 of the judgment under appeal, that the Board of Appeal had been rather terse when it set out the effects of the use of the disputed marks, the General Court nevertheless observed that the reason given by the Board of Appeal for that inadequacy - namely the fact that the relevant public would necessarily see a link between the marks at issue - had been the subject of significant arguments in the course of the administrative proceedings and before the General Court.

39 In paragraph 88 of the judgment under appeal, the General Court referred to Allergan's argument that the disputed marks were actually intended to take advantage of the distinctive character and repute acquired by BOTOX for the treatment of wrinkles, which would have the effect of decreasing the value of that mark. According to the General Court, those risks were sufficiently serious and real to justify the application of Article 8(5) of Regulation No 40/94. The General Court observed that Helena Rubinstein and L'Oréal had acknowledged at the hearing 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 was to be found in the trade mark BOTOX, a trade mark which is unique in that regard.

41 With regard to the second plea, the General Court found in paragraph 93 of the judgment under appeal that the Board of Appeal had set out in the contested decisions the reasons which made it possible to understand why the trade mark BOTOX has a reputation.

42 In paragraph 94 of the judgment under appeal, the General Court also expressed the view that, with regard to the effects of the use without due cause of the marks applied for, the reasons given in the contested decisions were sufficiently apparent to give Helena Rubinstein and L'Oréal all the relevant information needed to dispute before the General Court the grounds relied on by the Board of Appeal.

43 The General Court therefore rejected the second plea and dismissed the actions for annulment in their entirety.

45 OHIM and Allergan contend that the Court should dismiss the appeal and order Helena Rubinstein and L'Oréal to pay the costs.

46 Helena Rubinstein and L'Oréal rely on four grounds of appeal: (i) infringement of Articles 52(1) and 8(5) of Regulation No 40/94; (ii) infringement by the General Court of Article 115 of Regulation No 40/94, read in conjunction with Rule 38(2) of Regulation No 2868/95; (iii) infringement of Article 63 of Regulation No 40/94; and (iv) infringement of Article 73 of that regulation.

48 By the first part of their first ground of appeal, Helena Rubinstein and L'Oréal claim that the General Court erred in law in finding that the examination of the application for a declaration of invalidity could legitimately be carried out by reference to two earlier marks, registered in the United Kingdom, which formed no part of the basis of the contested decisions. They argue that the Board of Appeal of OHIM had based its decisions solely on the earlier Community trade mark No 2015832 composed of the figurative sign 'BOTOX'.

49 OHIM and Allergan contend that the first part of the first ground of appeal must be dismissed as unfounded because the Board of Appeal did not, in the contested decisions, refer expressly to the registration of that earlier Community figurative mark.

50 In paragraph 38 of the judgment under appeal, the General Court found that the applications for a declaration of invalidity submitted by Allergan were based on the registration of a number of national and Community figurative and word marks relating to the sign 'BOTOX', almost all of which had been registered before the applications for the disputed marks BOTOLIST and BOTOCYL were filed on 6 May and 19 July 2002 respectively. The General Court referred in that regard to paragraph 2 of the contested decisions, which lists those marks.

51 In paragraph 39 of the judgment under appeal, the General Court held that the Board of Appeal had not followed the approach of the Cancellation Division, which had based its decisions merely on the registration of the earlier Community figurative mark No 2015832, and that the Board of Appeal had found that a reputation had been acquired in respect of both the figurative and the word marks BOTOX registered before 6 May 2002, whether Community or national. The General Court also stated that that approach on the part of the Board of Appeal can be illustrated by the fact that, in the contested decisions, it does not refer to the figurative element of the earlier Community trade mark No 2015832.

52 In view of those various factors, the General Court was legitimately able to confine its review to the earlier national marks registered in the United Kingdom on 14 December 2000 for the treatment of wrinkles, since the United Kingdom was the territory in respect of which Allergan had produced most evidence.

53 It should also be noted that Helena Rubinstein and L'Oréal merely claim in a general way that the Board of Appeal, like the Cancellation Division, had based its assessment exclusively on the earlier Community figurative mark and do not put forward any arguments at all to substantiate that line of reasoning.

54 It follows that the first part of the first ground of appeal must be rejected.

55 By the second part of the first ground of appeal, Helena Rubinstein and L'Oréal claim that the General Court erred in law in finding that the earlier marks had a reputation.

56 As regards the relevant public, while Helena Rubinstein and L'Oréal do not dispute the General Court's assessment on that point, to the effect that the relevant public consists of the general public and health-care professionals, they claim that it nevertheless did not specifically consider whether those marks enjoyed a reputation with each of the two categories of person comprising the relevant public.

57 As regards the relevant territory, the judgment under appeal contains no information, according to Helena Rubinstein and L'Oréal, concerning the territory within which the earlier marks were considered to have a reputation.

58 As regards the proof of reputation, Helena Rubinstein and L'Oréal dispute the probative force of some of the evidence produced by Allergan, namely the volume of sales of products marketed under the BOTOX mark, mentioned in paragraphs 46 and 47 of the judgment under appeal, and the promotion of the BOTOX mark in scientific journals, described in paragraphs 48 and 49 of that judgment. As regards the significant media coverage of those products, referred to in paragraphs 50 to 54 of the judgment under appeal, Helena Rubinstein and L'Oréal maintain that the General Court distorted the clear sense of that evidence in so far as it was not substantiated by proof of the circulation, in the United Kingdom, of the newspapers or magazines in which the articles concerning the products marketed under the BOTOX mark were published. They submit that the findings made by the General Court in paragraphs 55 and 56 of the judgment under appeal regarding the inclusion of the term 'BOTOX' in a number of dictionaries is based on a distortion of the facts. Helena Rubinstein and L'Oréal also argue that, in paragraphs 60 to 63 of the judgment under appeal, the General Court distorted the clear sense of the evidence in relation to the market survey undertaken in the United Kingdom in September and October 2004. On that point, they dispute the relevance of that survey in so far as it does not contain any evidence - which, they claim, it was for Allergan to adduce - capable of establishing a link between the data contained therein and the situation existing at the date on which the application for registration of the disputed marks was filed.

59 So far as concerns the decision of 26 April 2005 of the United Kingdom Intellectual Property Office, Helena Rubinstein and L'Oréal argue that the General Court should have ruled this inadmissible as evidence because it related to a different dispute to which they were not party.

60 OHIM contends that the second part of the first ground of appeal must be rejected as, in part, inadmissible and, in part, unfounded.

61 First, as regards the extent of the reputation enjoyed by the earlier marks with respect to each of the categories of person comprising the relevant public, OHIM maintains that every trade mark which enjoys a reputation with the public at large must be assumed to be known to professionals.

62 Secondly, as regards the relevant territory, OHIM argues that, by confining its examination to the two earlier marks registered in the United Kingdom, the General Court clearly indicated that the relevant territory was the United Kingdom.

63 Thirdly, as regards the proof of reputation, OHIM and Allergan contend that the arguments put forward by Helena Rubinstein and L'Oréal in that connection are, on the one hand, misconceived, inasmuch as they seek to call into question the probative force of each item of evidence, whereas that evidence must be assessed as a whole, and, on the other hand, inadmissible, inasmuch as they concern factual issues.

64 It should first be observed that the argument put forward by Helena Rubinstein and L'Oréal alleging that the General Court erred in law as regards the reputation of the earlier marks with the two categories of person comprising the relevant public is based on a misreading of the judgment under appeal.

65 It is apparent from paragraphs 48, 49 and 50 of the judgment under appeal that the General Court examined, as evidence intended to establish the reputation of the earlier marks, the promotion of the BOTOX mark carried out, inter alia, through the publication of articles in English both in scientific journals, which are specifically aimed at practitioners, and in the general-interest press.

66 Also, as OHIM has stated, if a trade mark enjoys a reputation with the general public then, in principle, it is assumed to be known to professionals. It cannot be reasonably maintained, therefore, that the reputation enjoyed by the BOTOX mark, on account of the significant media coverage for the general public of products marketed under that mark or the inclusion of the term 'BOTOX' in English language dictionaries, could have been unknown to health-care professionals.

67 Accordingly, the General Court, having made these findings - from which it emerges that it took into account both the general public and health-care professionals - did not err in law by holding in paragraph 64 of the judgment under appeal that, as at the date on which the disputed marks were filed, namely 6 May or 19 July 2002, the trade mark BOTOX had a reputation in the United Kingdom as regards 'pharmaceutical preparations for the treatment of wrinkles' with respect to each of the categories comprising the relevant public.

68 Consequently, it is necessary to reject the argument that the General Court did not carry out any specific analysis as to whether the earlier marks had a reputation with each of the two categories of person comprising the relevant public.

69 Secondly, as regards the lack of information concerning the territory within which the earlier marks were held to enjoy a reputation, it should be observed that the fact that the General Court confined its examination to the two national marks registered in the United Kingdom on 14 December 2000 gives rise to the clear inference that the General Court considered the relevant territory to be the United Kingdom.

70 Also, it is apparent from the various items of evidence taken into consideration by the General Court - such as the press articles in English published in scientific journals or English daily newspapers, the inclusion of the word 'BOTOX' in English language dictionaries and the decision of the United Kingdom Intellectual Property Office - that the reputation of the earlier marks was examined in relation to the entire territory of the United Kingdom.

71 Accordingly, the argument that the General Court erred in law as regards the delimitation of the relevant territory must be rejected.

72 Thirdly, as regards proof of the reputation of the BOTOX mark, it should first of all be observed that the General Court undertook an overall assessment of the evidence adduced by Allergan in that connection, as is apparent from paragraph 64 of the judgment under appeal. As it is, the arguments by which Helena Rubinstein and L'Oréal dispute the proof of that reputation relate to each of those items of evidence taken separately. Consequently, as the Advocate General stated in point 20 of his Opinion, even if the Court of Justice were to hold that some of the arguments put forward by Helena Rubinstein and L'Oréal were well founded, that would not necessarily invalidate the conclusions reached by the General Court, as it would still be necessary to determine the weight, in the overall assessment carried out by the General Court, of the evidence to be disregarded. No argument to that effect has been put forward by Helena Rubinstein and L'Oréal in the context of this appeal.

73 That said, inasmuch as Helena Rubinstein and L'Oréal are disputing the probative force of certain evidence, such as the volume of sales of products marketed under the BOTOX mark and the promotion of that mark in scientific journals, it need only be stated that their true goal in pursuing that line of argument is to obtain a fresh assessment of that evidence before the Court of Justice.

74 However, it is settled case-law that the Court of Justice has no jurisdiction to establish the facts or, in principle, to examine the evidence which the General Court accepted in support of those facts. Provided that the evidence has been properly obtained and the general principles of law and the rules of procedure in relation to the burden of proof and the taking of evidence have been observed, it is for the General Court alone to assess the value which should be attached to the evidence produced before it. Save where the clear sense of the evidence has been distorted, that appraisal does not therefore constitute a point of law which is subject, as such, to review by the Court of Justice (Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 33 and the case-law cited).

75 It follows that, since no distortion has been alleged in the present case, the argument by which Helena Rubinstein and L'Oréal seek to dispute the probative force of certain items of evidence must be rejected as inadmissible.

76 Inasmuch as Helena Rubinstein and L'Oréal submit that the General Court distorted the clear sense of the evidence relating to the significance of the media coverage of the products marketed under the BOTOX mark and to the market survey undertaken in the United Kingdom in September and October 2004, and that its assessment relating to the inclusion of the word 'BOTOX' in a number of dictionaries was based on a distortion of the facts, it should be stated that, while referring to a distortion of the clear sense of that evidence or of the facts, Helena Rubinstein and L'Oréal merely challenge the relevance of that evidence or of those facts by means of general and unsubstantiated assertions and are really seeking a fresh assessment of that evidence by the Court of Justice.

77 As is apparent from the settled case-law of the Court of Justice, as recalled in paragraph 74 above, such arguments must be rejected as inadmissible.

78 Lastly, as regards the submission made by Helena Rubinstein and L'Oréal that the decision of 26 April 2005 of the United Kingdom Intellectual Property Office is inadmissible, in so far as it concerns a different set of proceedings, it should be observed that the findings set out in that decision constitute, in themselves, a fact which may, if relevant, be taken into consideration by the General Court in the exercise of its absolute discretion in relation to the facts, in order to establish the reputation of the earlier marks in the United Kingdom. Moreover, Helena Rubinstein and L'Oréal have not put forward, whether before OHIM or before the General Court, any argument to dispute the accuracy of the findings made in that decision, as is apparent from paragraph 58 of the judgment under appeal.

79 The argument put forward by Helena Rubinstein and L'Oréal alleging the inadmissibility of the decision of 26 April 2005 of the United Kingdom Intellectual Property Office must therefore be rejected as unfounded.

80 It follows that the second part of the first ground of appeal must be rejected as in part inadmissible and in part unfounded.

81 By the third part of the first ground of appeal, Helena Rubinstein and L'Oréal claim that the General Court erred in law in confirming the existence of a link between the earlier BOTOX marks and the disputed marks on the basis of the common element 'bot' or 'boto', in so far as that common element is descriptive or generic in that it refers to the 'botulinum toxin'. Such a link, they argue, should not be made since an applicant for a mark should be allowed to include a descriptive element of that kind in his mark.

82 According to OHIM and Allergan, this third part must be rejected as inadmissible, on the ground that it relates to a question of fact in respect of which the General Court has exclusive jurisdiction.

83 In so far as Helena Rubinstein and L'Oréal seek, by the third part of the first ground of appeal, to dispute the analysis carried out by the General Court in paragraphs 70 to 73 of the judgment under appeal for the purposes of establishing that the prefix 'bot' or 'boto' is not descriptive, it should be noted that such an assessment is of a factual nature.

84 As is clear from Article 256 TFEU and Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only and, accordingly, the General Court alone has jurisdiction to find and appraise the facts, save where the factual inaccuracy of its findings results from the documents in the case before it. The appraisal of the facts by the General Court does not therefore constitute, save where the clear sense of the evidence produced before it is distorted, a question of law which is subject, as such, to review by the Court of Justice (see, inter alia, Case C-121/01 P O'Hannrachain v Parliament [2003] ECR I-5539, paragraph 35, and Case C-431/07 P Bouygues and Bouygues Télécom v Commission [2009] ECR I-2665, paragraph 137).

85 Since it has not been claimed, in relation to the appraisal in paragraphs 70 to 73 of the judgment under appeal, that there was any distortion of the facts or evidence produced before the General Court, this third part of the first ground of appeal must be rejected as inadmissible in so far as it seeks to dispute that appraisal.

86 On the other hand, Helena Rubinstein and L'Oréal also submit, by this third part, that it must be permissible for an applicant for a trade mark to include, in the mark which it seeks to have registered, an element which forms part of an earlier mark owned by a third party to the extent that that common element is descriptive. It must be observed that this line of argument raises a question of law which is subject to review by the Court of Justice on appeal.

87 It should be noted, in this connection, that that line of argument relies on the premiss that the common element 'bot' or 'boto' is descriptive.

88 First, however, paragraphs 70 to 73 of the judgment under appeal show that the General Court held that the prefix 'bot' or 'boto' is not descriptive. Secondly, as is apparent from paragraphs 83 to 85 above, the arguments by which Helena Rubinstein and L'Oréal seek to call into question that appraisal cannot be submitted to the Court of Justice in an appeal.

89 In those circumstances, in so far as Helena Rubinstein and L'Oréal claim that they should have the right to include in the disputed marks an element shared with an earlier mark to the extent that that element is descriptive, the third part of the first ground of appeal is ineffective.

90 It follows from the foregoing that the third part of the first ground of appeal must be rejected.

91 By the fourth part of the first ground of appeal, Helena Rubinstein and L'Oréal claim that the General Court erred in law in accepting it as established that there was a risk of detriment to the reputation of the earlier marks. They submit that the General Court's assessment in paragraph 88 of the judgment under appeal, according to which the disputed marks actually seek to take advantage of the distinctive character and repute acquired by the earlier BOTOX marks for the treatment of wrinkles, is unsubstantiated by any evidence. They also argue that, although the disputed marks might have contained a reference to the botulinum toxin, they neither sought nor intended to be associated with the BOTOX mark, nor could they be associated with that mark, which is registered in respect of pharmaceutical products issued solely on medical prescription.

92 According to OHIM and Allergan, this part of the first ground of appeal must be rejected as unfounded. The link between the earlier marks and the disputed marks is likely to lead to misappropriation of the earlier marks' repute because it suggests that the cosmetic products of Helena Rubinstein and L'Oréal have an effect comparable to that achieved with BOTOX. That would have the effect of reducing the value of the earlier marks.

93 It should be observed that, in order to benefit from the protection introduced by Article 8(5) of Regulation No 40/94, the proprietor of the earlier mark must prove that use of the mark for which registration is sought would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The proprietor of the earlier trade mark is not required, for that purpose, to demonstrate actual and present injury to its mark for the purposes of Article 8(5). When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for this actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see, by analogy, Case C-252/07 Intel Corporation [2008] ECR I-8823, paragraphs 37 and 38).

94 In addition, in order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case (Case C-487/07 L'Oréal and Others [2009] ECR I-5185, paragraph 44).

95 Accordingly, the General Court was correct in holding, in paragraph 82 of the judgment under appeal, that the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark but must, however, adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment, and 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.

96 It should also be noted that it was only after analysing various factors that the General Court concluded that there was a link between the earlier marks and the disputed marks. It thus found, inter alia, in paragraphs 70 to 72 of the judgment under appeal, that the prefix 'boto' was common to the trade marks at issue and could not be regarded as an abbreviation of 'botulinus' or 'botulinum'; in paragraphs 73 and 74 of that judgment, it found that the sign 'BOTOX' had acquired a distinctive character; in paragraph 76 of that judgment, it noted the significance of the reputation of the earlier marks; and, in paragraph 78 of the judgment, it noted the fact that the goods concerned fell within 'related market sectors'. The General Court also stated that the relevant public would establish that link before even associating the disputed marks with 'botulinum'. It also observed in paragraph 88 of the judgment under appeal that Helena Rubinstein and L'Oréal had acknowledged at the hearing that, even if 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 BOTOX trade mark.

97 In those circumstances, it was after an overall assessment of the factors relevant to the case - as the Advocate General observed in point 36 of his Opinion - that the General Court concluded in paragraph 88 of the judgment under appeal that the disputed marks sought to take advantage of the distinctive character and repute acquired by the earlier BOTOX marks. Consequently, the argument by which Helena Rubinstein and L'Oréal claim that the determination of parasitic intent is not supported by any evidence is unfounded.

98 Moreover, the argument put forward by Helena Rubinstein and L'Oréal to the effect that, even if the disputed marks contained a reference to the botulinum toxin, they were not intended to be associated with the BOTOX mark, must be rejected. That argument seeks to call into question the General Court's assessment - on which its finding in paragraph 88 of the judgment under appeal is based - that the prefix 'boto' is not descriptive and cannot be considered to be a reference to the botulinum toxin. Since an assessment of that nature is factual, it is not open to review by the Court of Justice on appeal, in accordance with the case-law referred to in paragraph 84 above.

99 It follows that the fourth part of the first ground of appeal must be rejected. Consequently, the first ground of appeal must be rejected in its entirety.

100 By their second ground of appeal, Helena Rubinstein and L'Oréal claim that the General Court infringed Article 115 of Regulation No 40/94 and Rule 38(2) of Regulation No 2868/95 in so far as it rejected the plea challenging the Board of Appeal's decision declaring that the press articles in English were admissible, whereas those articles should have been translated into the language of the proceedings before the Board of Appeal, namely French.

101 OHIM, supported by Allergan, contends that the second ground of appeal must be rejected as unfounded in so far as Rule 38(2) of Regulation No 2868/95, which deals with invalidity proceedings, does not provide for a penalty if an applicant for a declaration of invalidity does not submit translations, into the language of the proceedings, of the evidence adduced in support of its application.

102 It is settled law that the rule according to which the evidence submitted in support of an opposition or of an application for invalidity or revocation of the trade mark must be submitted in the language of the proceedings or be accompanied by a translation into that language is justified by the need to observe the principle of the right to be heard and to ensure equality of arms between the parties in inter partes proceedings (see, to that effect, Case T-107/02 GE Betz v OHIM - Atofina Chemicals (BIOMATE) [2004] ECR II-1845, paragraph 72, and Case T-407/05 SAEME v OHIM - Racke (REVIAN's) [2007] ECR II-4385, paragraph 35).

103 In the present case, it cannot be held that the lack of a translation of the press articles produced in English adversely affected the rights of defence of Helena Rubinstein and L'Oréal, since they were able to challenge the evidential value of those articles before the General Court, since they admit, in paragraph 112 of their appeal, that they understood the contents of those articles and since English was the language of the case in the action before the General Court.

104 Moreover, it should be noted that, as the General Court observed in paragraph 54 of the judgment under appeal, Helena Rubinstein and L'Oréal did not, whether before the Cancellation Division or before the Board of Appeal, submit any objection or challenge as regards the taking into account of evidence adduced in English and accompanying the application for invalidity in respect of the disputed marks.

106 In the interests of the sound administration of justice, it is appropriate to address the fourth ground of appeal before the third ground.

107 By their fourth ground of appeal, Helena Rubinstein and L'Oréal allege that the General Court infringed Article 73 of Regulation No 40/94 by rejecting their plea that the contested decisions failed to state sufficient reasons in relation to the finding that the earlier BOTOX marks had a reputation and that there was a likelihood of detriment to those marks.

108 OHIM contends that the fourth ground of appeal must be rejected as inadmissible in so far as Helena Rubinstein and L'Oréal are merely repeating the plea on which they have already relied before the General Court.

109 In any event, according to OHIM and Allergan, that plea must be rejected as unfounded in so far as the Board of Appeal is not required to give express reasons for its assessment of the probative force of each item of evidence submitted to it; nor is it required to support its reasoning with facts.

110 It should first be observed that, by claiming that the General Court infringed Article 73 of Regulation No 40/94 in rejecting their plea concerning failure to state sufficient reasons for the contested decisions, Helena Rubinstein and L'Oréal are disputing the General Court's interpretation of European Union law or its application of that law. Accordingly, the points of law examined at first instance may be discussed again in the course of an appeal. Indeed, if an appellant could not in that way base his appeal on pleas in law and arguments already relied on before the General Court, an appeal would be deprived of part of its purpose (see, inter alia, Case C-41/00 P Interporc v Commission [2003] ECR I-2125, paragraph 17, and Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 110). The fourth ground of appeal is therefore admissible.

111 Secondly, it should be observed that - as the General Court correctly stated in paragraph 92 of the judgment under appeal - the obligation on OHIM, referred to in Article 73 of Regulation No 40/94, to state reasons for its decisions has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision.

112 Such an obligation may be discharged without it being necessary to respond expressly and exhaustively to all the arguments put forward by an applicant.

113 In the present case, the General Court observed in paragraph 93 of the judgment under appeal that the Board of Appeal had set out in the contested decisions the reasons why the BOTOX mark had a reputation. The General Court stated in that regard that 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'.

114 Clearly also, the detailed arguments submitted by Helena Rubinstein and L'Oréal before the General Court - summarised in paragraph 27 of the judgment under appeal - in order to challenge the probative force of the various items of evidence of the reputation of that mark, or the admissibility of that evidence, demonstrate that Helena Rubinstein and L'Oréal were able to exercise their rights of defence.

115 Consequently, the General Court was able, without erring in law, to reject the plea alleging failure to state sufficient reasons for the contested decisions in relation to the reputation of the BOTOX mark.

116 As regards the reasons relating to the risk of detriment to the earlier marks, although the General Court admittedly observed that these were tersely stated, it nevertheless held that the contested decisions contain grounds proving that, by the disputed marks, Helena Rubinstein and L'Oréal were seeking to take unfair advantage of the distinctive character of the earlier marks. The General Court referred in that connection to paragraphs 42 to 44 of the Helena Rubinstein decision and to paragraphs 43 to 45 of the L'Oréal decision, which are reproduced in paragraph 86 of the judgment under appeal. The General Court added that Helena Rubinstein and L'Oréal had in their possession all the relevant information to enable them to dispute those reasons in their action before it.

117 Moreover, it should also be noted that Helena Rubinstein and L'Oréal do no more than claim, in peremptory fashion, that the contested decisions give no reasons in that connection, and put forward no arguments to support their contention or to demonstrate how that alleged failure to state reasons impaired the exercise of their right of action.

118 In those circumstances, the General Court did not err in law in rejecting the plea alleging failure to state sufficient reasons for the contested decisions in relation to the risk of detriment to the earlier marks.

120 By their third ground of appeal, Helena Rubinstein and L'Oréal maintain that the General Court infringed Article 63 of Regulation No 40/94. This ground is divided into two parts.

121 By the first part of this ground of appeal, Helena Rubinstein and L'Oréal submit that, in its analysis of the reputation of the earlier marks, the General Court took into account different marks from those selected by the Cancellation Division and the Board of Appeal and undertook a specific examination of the evidence submitted by Allergan, which had not been examined by the Board of Appeal.

122 By the second part of this ground of appeal, Helena Rubinstein and L'Oréal allege that the General Court, wrongly, took into account evidence of the reputation of the earlier BOTOX marks which had not been produced until the proceedings before the Board of Appeal and the admissibility of which was challenged by Helena Rubinstein and L'Oréal, that evidence being a witness statement by a director of Allergan and a market survey. The Board of Appeal had not taken that evidence into account because it based its findings exclusively on the indirect advertising and intensive media coverage.

123 OHIM, supported by Allergan, contends that the third ground of appeal must be rejected as unfounded on the ground that the General Court did not exceed the limits of its jurisdiction to review the legality of measures.

124 As regards the first part of this ground of appeal, OHIM states that the Board of Appeal is not required to give express reasons for its assessment of the probative force of each item of evidence submitted to it. The General Court merely addressed each of the arguments raised by Helena Rubinstein and L'Oréal in their action.

125 As regards the second part of this ground of appeal, OHIM contends that it must be assumed that the Board of Appeal found the witness statement of the director of Allergan and the market survey to be admissible as evidence because, if it had considered that they had been submitted belatedly, it would have been compelled, under Article 74(2) of Regulation 40/94, to adopt an express position on their admissibility.

126 As regards the first part of the third ground of appeal, it is necessary to reject - for the reasons set out in the examination of the first part of the first ground of appeal - the allegation that the General Court erred in law by basing its findings, not on the marks selected by the Cancellation Division and Board of Appeal, but on different earlier marks, namely the two national marks registered in the United Kingdom.

127 As regards the allegation relating to the General Court's specific examination of each item of evidence of the reputation of the earlier marks submitted by Allergan, it should be observed that this is based on the premiss that the Board of Appeal did not carry out an individual examination of that evidence, which in turn is based on the view that insufficient reasons were stated in the contested decisions in relation to the probative force of each item of evidence. However, as emerged from the examination of the fourth ground of appeal, sufficient reasons are stated in the contested decisions in relation to the finding that the earlier marks had a reputation and, accordingly, the Board of Appeal was not required to give express reasons for its findings in relation to the probative force of each item of evidence.

128 Also, in so far as Helena Rubinstein and L'Oréal challenged each item of evidence in terms of its probative force and/or its admissibility, the General Court had to examine their arguments and respond to them. Consequently, as the Advocate General observed in point 50 of his Opinion, it was at the end of its analysis of that evidence that the General Court held that the contested decisions were not vitiated by any error of law. The first part of the third ground of appeal must therefore be rejected.

129 As regards the second part of the third ground of appeal, it should be noted that Helena Rubinstein and L'Oréal merely argue that, in accepting the reputation of the BOTOX mark, the Board of Appeal based its findings exclusively on the indirect advertising and intense media campaign. However, it need only be pointed out that, according to the Board of Appeal, the reputation of that mark results mainly from the indirect advertising of the product by the media. By using the term 'mainly', the Board of Appeal favoured the probative evidence relating to the intense media campaign launched in the years just following the year 2000 for the purpose of establishing the reputation of the BOTOX mark, without none the less excluding the other evidence submitted by Allergan.

130 It follows that Helena Rubinstein and L'Oréal have failed to put forward any argument capable of calling in question the General Court's finding that the Board of Appeal took into consideration the witness statement of the director of Allergan and the market survey as evidence of the reputation of the BOTOX mark. On the contrary, as is apparent from paragraphs 44 and 45 of the applications submitted at first instance, Helena Rubinstein and L'Oréal claimed before the General Court that that evidence had been wrongly taken into consideration by the Board of Appeal.

131 In those circumstances, it cannot be claimed that the General Court infringed Article 63 of Regulation No 40/94 and, in consequence, the second part of the third ground of appeal must be rejected as unfounded.

133 It follows from all of the foregoing considerations that the appeal must be dismissed in its entirety.

134 Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since OHIM has applied for costs and Helena Rubinstein and L'Oréal have been unsuccessful, Helena Rubinstein and L'Oréal must be ordered to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Rubinstein and L'Oreal v OHIM (Appeal) [2012] EUECJ C-100/11_P (10 May 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/C10011_P.html Cite as: [2012] EUECJ C-100/11_P

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