CELEX: 62008TJ0345
Language: en
Date: 2010-12-16
Title: Judgment of the General Court (Third Chamber) of 16 December 2010. # Helena Rubinstein SNC (T-345/08) and L’Oréal SA (T-357/08) v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). # 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) - Obligation to state the reasons on which the decision is based - Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009). # Joined cases T-345/08 and T-357/08.

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