Opinion of the Advocate General — ECLI:EU:C:2012:95
Date: 2012-02-16
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: France

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. 119 It follows that the fourth ground of appeal must be rejected as unfounded. The third ground of appeal Arguments of the parties 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 No 40/94, to adopt an express position on their admissibility. Findings of the Court 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. 132 The third ground of appeal must therefore be rejected as unfounded. 133 It follows from all of the foregoing considerations that the appeal must be dismissed in its entirety. Costs 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. On those grounds, the Court (First Chamber) hereby: 1. Dismisses the appeal; 2. Orders Helena Rubinstein SNC and L’Oréal SA to pay the costs. [Signatures] * Language of the case: English.