'Boto'-prefixed marks invalidated based on reputation of BOTOX

European Union
In Helena Rubinstein SNC v Office for Harmonisation in the Internal Market (OHIM) (Joined Cases T-345/08 and T-357/08, December 16 2010), the General Court has held that use of the marks BOTOLIST and BOTOCYL would take unfair advantage of the distinctive character and reputation of the earlier BOTOX marks.
 
In 2002 French company Helena Rubinstein SNC applied for the registration of the word mark BOTOLIST as a Community trademark (CTM) for products in Class 3 of the Nice Classification (Case T-345/08). That same year L’Oréal SA filed an application for the registration of the word mark BOTOCYL as a CTM, also for products in Class 3 (Case T-357/08).
 
The two marks matured into registrations in 2003. On February 2 2005 US company Allergan Inc filed applications for a declaration of invalidity of these registrations based on several earlier CTMs and, in particular, registrations for the word mark BOTOX and the device mark BOTOX in Class 5.
 
On March 28 2007 (Case T-345/08) and April 4 2007 (Case T-357/08), the Cancellation Division of OHIM rejected Allergan's applications. The First Board of Appeal of OHIM annulled the decisions on May 28 2008 (Case T-345/08) and June 5 2008 (Case T-357/08), considering that the applications for a declaration of invalidity were well founded under Article 8(5) of the Community Trademark Regulation (40/94), even though there was no likelihood of confusion between the marks.  
 
The General Court upheld the declarations of invalidity of the marks BOTOLIST and BOTOCYL for goods in Class 3, finding that the earlier BOTOX marks had a reputation in all member states - and, more specifically, the United Kingdom - for "pharmaceutical preparations for the treatment of wrinkles" as at the filing date of the contested trademarks in light of the evidence submitted (eg, volume of sales from 1999 to 2003, significant media coverage and the fact that several English dictionaries recognised BOTOX as a trademark).
 
The evidential value of several supporting documents was disputed on the grounds that they dated from a period posterior to the filling of the contested trademarks. However, the court stated that, although the reputation of an earlier mark must be established as at the filing date of the application for the disputed mark, these documents could not be deprived of evidential value as long as they enabled conclusions to be drawn with regard to the situation at that date. The court pointed out that the reputation of a trademark is, in general, acquired progressively.
 
While there was no likelihood of confusion between the marks, the court considered that the relevant public would establish a link (and a mere link was considered to be sufficient) between BOTOLIST and BOTOCYL on the one hand, and BOTOX on the other, as the common prefix 'boto' was:
  • unusual in the pharmaceutical or cosmetic fields;
  • not descriptive; and
  • not an abbreviation for ‘botulinus’ or ‘botulinum’.   
The court also concurred with the board’s finding that "pharmaceutical preparations for the treatment of wrinkles" and "cosmetics, among other creams" were "related market sectors", so that the contested marks could seek to take advantage of the distinctive character and reputation of BOTOX and possibly decrease the value of that mark.
 
The decision shows that the monopoly of the BOTOX marks is both extensive and defensive. The court reaffirmed the reputation attached to the BOTOX marks, and interestingly pointed out the possible link between cosmetics and certain pharmaceuticals. The prefix 'boto' should thus be avoided for goods in Classes 3 and 5, at least at the Community level.  
 
Arguably, the Community position is debatable. First, the choice of the prefix 'boto' cannot be regarded as neutral to the extent that it creates a link with products containing botulinus or botulinum. Second, the decision in the present case contradicts the approach of the French High Court, which held on July 1 2008 that BOTOX had become usual for products containing the botulinum toxin.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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