Case C-100/11 P

The present case concerns the appeal brought by Helena Rubinstein SNC and L’Oréal SA

(‘Helena Rubinstein’ and ‘L’Oréal’; or, collectively, ‘the appellants’) against the judgment by

which the General Court dismissed the actions which they had brought against the decisions of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) declaring invalid Community trademarks which they own: BOTOLIST and BOTOCYL.

Short history of the case

On 6 May 2002 and 9 July 2002 respectively, Helena Rubinstein and L’Oréal filed an

application with OHIM for registration of Community trademarks under Regulation No 40/94, as amended. (2) They sought to register the word signs BOTOLIST (Helena Rubinstein) and BOTOCYL (L’Oréal) for goods in Class 3 of the Nice Agreement, (3) including, in particular, cosmetics such as creams, milks, lotions, gels and powders for face, body and hands. The Community trademarks BOTOLIST and BOTOCYL were registered on 19 November 2003 and 14 October 2003 respectively. On 2 February 2005, Allergan, Inc. (‘Allergan’) filed an application with OHIM for a declaration of invalidity, in respect of both marks, on the basis of various earlier Community and national figurative and word marks having the sign BOTOX as their subject and registered between 12 April 1991 and 7 August 2003, chiefly for goods in Class 5 of the Nice Agreement, including – in so far as is relevant for present purposes – pharmaceutical preparations for the treatment of wrinkles

Resolution of the General Court

The General Court joined the proceedings and, by judgment of 16 December 2010 (‘the

judgment under appeal’), dismissed both actions and ordered Helena Rubinstein and L’Oréal to pay the costs. The judgment under appeal was notified to Allergan, as well as to Helena

Rubinstein, L’Oreal and OHIM.

Appeal filed by Helena Rubinstein and L’Oréal

The appeal has been based on four main points:

1)    The Court statement is incompatible with the appellants’ claim – that the Board of Appeal, like the Cancellation Division, took account solely of Community trade mark No 2015832 – since it is both a word and a figurative mark and is not accompanied by any caption. At that point in the contested decisions, the Board of Appeal clearly refers to all the rights invoked by Allergan and not only to the mark mentioned by Helena Rubinstein and L’Oréal. Lastly, as both OHIM and Allergan point out, the fact that the General Court did not take any account of the figurative element of the Community trade mark in assessing the similarity of the marks under comparison

2)    Reputation of the earlier marks. By the second complaint, Helena Rubinstein and L’Oréal claim that the General Court made various errors in law by concluding that proof had been furnished of the reputation of the earlier marks. Those criticisms – the admissibility or merits of which OHIM and Allergan contest on the basis of largely convergent arguments like: the relevant public, the relevant territory and evidence of the reputation of the trademarks.

3)    Existence of a link between the earlier marks and the appellants’ marks. By the third complaint under the first ground of appeal, the appellants contest the finding made in the judgment under appeal that the relevant public will establish a link between the earlier marks BOTOX and the marks BOTOLIST and BOTOCYL, which the appellants own. According to the appellants, such a link cannot, in particular, be based on the common element ‘BOT’ or ‘BOTO’, since that is a descriptive element which refers to the botulinum toxin. The appellants claim the right to include that element, which is used in general to indicate the toxin in question, in their mark without being accused, on that ground, of attempting to link their marks with Allergan’s marks.

4)    Damage caused to the earlier marks. As regards, more specifically, the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’ (also referred to as ‘parasitism’ or ‘free-riding’), the Court stated in L’Oréal that that concept relates not to the detriment caused to the mark but ‘to the advantage taken by the third party as a result of the use of the identical or similar sign’. According to the Court, it covers, in particular, ‘cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation’

Motivation of the Court:

The Court does not seem entirely possible to agree with the reasoning followed in the

Judgment under appeal, at least when applied to the circumstances of the case. While not

absolutely excluding the admissibility of documentary evidence whose written elements do not need to be translated or translated in full, where their evidential value does not actually depend on their content or they are immediately comprehensible, that does not seem to me to be the position in the case of press articles which have been produced by a party in order to show that information had been disseminated regarding the therapeutic characteristics of a pharmaceutical preparation and that there was a broad awareness of that information among a specialist public and/or the public at large at a date before the date on which it was published.

The General Court states that although the statement of reasons for the contested decisions on the effects of the use of the appellants’ marks was ‘terse’, it allowed them to have the necessary information to contest the Board of Appeal’s findings in that regard. The appellants merely observe that what the General Court calls a statement of reasons consists of just two sentences and states the obvious, that is to say, that it does not constitute a ‘statement of reasons in the legal sense’. Contrary to the assertions made by the appellants, the Helena Rubinstein decision and the L’Oréal decision show the reasons which led the Board of Appeal, on the one hand, to find that there was no due cause to use the appellants’ marks and, on the other, to consider that the appellants had taken unfair advantage of the distinctive character of the mark BOTOX.