Case C-100/11 P

Helena Rubinstein SNC

and

L'Oréal SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛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’

Summary of the Judgment

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 the earlier mark with a reputation extended to non-similar goods or services — Proof to be adduced by proprietor — Evidence of a future risk, not hypothetical, of unfair advantage or detriment

(Council Regulation No 40/94, Art. 8(5))

In order to benefit from the protection introduced by Article 8(5) of Regulation No 40/94 on the Community trade mark, 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 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.

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 an overall assessment, taking into account all factors relevant to the circumstances of the case.

Thus, the proprietor of the earlier mark is not required to demonstrate actual present harm to his mark. He must, however, adduce prima facie evidence of future risk, 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 paras 93-95)

Case C-100/11 P

Helena Rubinstein SNC

and

L'Oréal SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛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’

Summary of the Judgment

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 the earlier mark with a reputation extended to non-similar goods or services — Proof to be adduced by proprietor — Evidence of a future risk, not hypothetical, of unfair advantage or detriment

(Council Regulation No 40/94, Art. 8(5))

In order to benefit from the protection introduced by Article 8(5) of Regulation No 40/94 on the Community trade mark, 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 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.

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 an overall assessment, taking into account all factors relevant to the circumstances of the case.

Thus, the proprietor of the earlier mark is not required to demonstrate actual present harm to his mark. He must, however, adduce prima facie evidence of future risk, 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 paras 93-95)