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:

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

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:

1. Dismisses the actions;

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