ECJ confirms that ‘boto’ marks would take unfair advantage of BOTOX

European Union

In Helena Rubinstein SNC v Office for Harmonisation in the Internal Market (OHIM) (Case C-100/11 P, May 10 2012), the Court of Justice of the European Union (ECJ) has confirmed that the marks BOTOLIST and BOTOCYL would take unfair advantage of the distinctiveness and reputation of the earlier BOTOX marks.

In 2002 Helena Rubinstein and L’Oréal applied to register the Community word marks BOTOLIST and BOTOCYL, respectively, in Class 3 of the Nice Classification. On February 2 2005 Allergan Inc filed an application for a declaration of invalidity of these marks on the basis of Community and UK trademarks registrations for BOTOX (word and word-and-device trademarks) in Class 5.

On March 28 2007 and April 4 2007 the Cancellation Division of OHIM rejected Allergan’s applications. The First Board of Appeal of OHIM annulled these decisions on May 28 2008 and June 5 2008, considering that the applications for a declaration of invalidity were well founded under Article 8(5) of the Community Trademark Regulation (40/94).

On December 16 2010 the General Court upheld the declarations of invalidity of the marks BOTOLIST and BOTOCYL based on the reputation of the earlier BOTOX marks for “pharmaceutical preparations for the treatment of wrinkles” at the filing date of the challenged trademarks.

Helena Rubinstein and L’Oréal appealed against that judgment on March 2 2011. The advocate general delivered his opinion on February 16 2012, recommending that the ECJ dismiss the appeal. In its decision of May 10 2012, the ECJ followed the opinion of the advocate general and dismissed the appeal. 

First, the ECJ estimated that the General Court had not erred in law in limiting its review to the earlier UK trademarks, since the United Kingdom was the territory in respect of which Allergan had produced most of the evidence.

Second, the ECJ considered that no error had been made by the General Court in assessing the reputation of the earlier marks among the relevant public, the relevant territory and the evidence produced by Allergan, the probative value of which could not be re-examined by the ECJ.

Third, the General Court had correctly found that the relevant public would establish a link between the marks and that there was a risk that use of BOTOLIST and BOTOCYL would take unfair advantage of the BOTOX marks, given that:

  • the prefix ‘boto’ could not be regarded as an abbreviation for the botulinum toxin;
  • the BOTOX marks had acquired a reputation;
  • the goods concerned fell within related market sectors;
  • the public would establish a link between the marks even before associating the disputed marks with the botulinum toxin; and
  • Helena Rubinstein and L’Oréal had acknowledged at the hearing that, even if their products did not contain the botulinum toxin, they intended to take advantage of the image which was associated with that product, which was to be found in the BOTOX marks.  

Following this decision, it appears tat Allergan’s monopoly in the BOTOX marks is significant and provides a very strong defence against other ‘boto’ marks. It is thus preferable to avoid using the prefix ‘boto’ for goods in Classes 3 and 5, at least at the Community level. The ECJ’s position is surprising, and is completely at odds with the July 1 2008 decision of the French High Court holding that BOTOX had become usual for products containing the botulinum toxin.

Jean-Philippe Bresson and Franck Soutoul, INLEX IP EXPERTISE, Paris

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