**Judgment of the General Court (Third Chamber) of 16 December 2010 – Rubinstein and L’Oréal v OHIM – Allergan (BOTOLIST and
BOTOCYL)**

**(Joined Cases T-345/08 and T-357/08)**

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) – Duty to state reasons – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009)

1.                     *Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity – Registration contrary to Article
8(5) of Regulation No 40/94 (Council Regulation No 40/94, Arts 8(5) and 52(1)(a)) (see paras 40, 64, 79, 88)*

2.                     *Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition
by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended
to dissimilar goods or services – Condition – Link between the marks – Criteria for assessment (Council Regulation No 40/94,
Art. 8(5)) (see paras 65-66)*

3.                     *Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition
by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended
to dissimilar goods or services – Proof to be adduced by proprietor – Future, non-hypothetical risk of unfair advantage or
damage (Council Regulation No 40/94, Art. 8(5)) (see para. 82)*

4.                     *Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition
by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended
to dissimilar goods or services – Conditions – Taking unfair advantage of the distinctive character or repute of the earlier
mark – Detriment to the distinctive character or repute of the earlier mark – Criteria for assessment (Council Regulation
No 40/94, Art. 8(5)) (see paras 83-85)*

5.                     *Community trade mark – Procedural provisions – Statement of reasons for decisions – Aim (Council Regulation No 40/94, Art.
73) (see para. 92)*

**Re:**

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| | ACTIONS brought against, in Case T-345/08, the decision of the First Board of Appeal of OHIM of 28 May 2008 (Case R 863/2007-1), relating to cancellation proceedings between Allergan, Inc. and Helena Rubinstein SNC, and, in Case T‐357/08, 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, Inc. and L’Oréal SA. |

**Information relating to the case**

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| --- | --- |
| Registered Community trade marks subject of the application for a declaration of invalidity: | Community word mark No 2686392 BOTOLIST for goods in Class 3 and Community word mark No 2782282 BOTOCYL for goods in Class 3 – Community trade mark registration Nos 2686392 and 2782282 |
| Proprietors of the Community trade marks: | Helena Rubinstein SNC and L’Oréal SA |
| Party requesting the declaration of invalidity of the Community trade mark: | Allergan, Inc. |
| Trade mark right of the party requesting the declaration of invalidity: | Community trade mark registration No 2015832 of the figurative mark BOTOX for goods in Class 5; Community trade mark registration No 2575371 of the figurative mark BOTOX for goods in Class 5; Community trade mark registration No 1923986 of the figurative mark BOTOX for goods in Classes 5 and 16; Community trade mark registration No 1999481 of the word mark BOTOX for goods in Class 5; various national trade marks BOTOX |
| Decision of the Cancellation Division: | Applications for a declaration of invalidity dismissed |
| Decision of the Board of Appeal: | Decisions of the Cancellation Division annulled |

**Operative part**

The Court:

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| --- | --- | --- |
| 1. | | Dismisses the actions; |

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| --- | --- | --- |
| 2. | | Orders Helena Rubinstein SNC to pay the costs in Case T‐345/08; |

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| --- | --- | --- |
| 3. | | Orders L’Oréal SA to pay the costs in Case T‐357/08. |