Wrinkles for L’Oréal during BOTOX® battle with Allergan

On 16th February 2012 Advocate General Mengozzi delivered his opinion on the appeal to the Court of Justice of the European Union brought jointly by Helena Rubinstein and L’Oréal against a 16th December 2010 judgment of the General Court of the European Union which dismissed appeals filed by those two companies.

The case has a long history. In February 2005 Allergan, Inc (proprietor of the BOTOX® trademark, registered worldwide) filed applications with the Office for Harmonisation in the Internal Market (OHIM) to declare invalid registration of the trademarks BOTOLIST (filed by Helena Rubenstein) and BOTOCYL (filed by L’Oréal) based on Articles 8(1)(b), 8(4) and 8(5) of the Community Trademark Regulation. The advocate general summed up the next stage as follows:

“By decisions of 28 March 2007 (BOTOLIST) and 4 April 2007 (BOTOCYL), the Cancellation Division of OHIM rejected the applications for a declaration of invalidity. On 1 June 2007, Allergan filed a notice of appeal against those decisions under Articles 57 to 62 of Regulation No. 40./94. By Decisions of 28 May 2008 (BOTOLIST) and 5 June 2008 (BOTOCYL), the First Board of Appeal of OHIM upheld the appeals brought by Allergan in so far as they were based on Article 8(5) of Regulation No. 40/94 (‘the contested decisions’).”

This case is significant in that it sets out the latest views of the advocate general on Article 8(5), which reads:

“Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.” (Emphasis added.)

The key issues were whether:

• The earlier and later trademarks were “similar”.
• The earlier trademark had a reputation.
• The use of the later trademark “without due cause... would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trade mark”.

Helena Rubenstein and L’Oréal raised several objections to the judgment of the General Court, but the advocate general concluded that “in the light of all the above considerations, I therefore propose that the Court dismiss the appeal and order the appellants to pay the costs”. In paragraphs 30 to 37 of his opinion, the advocate general commented on three recent Article 8(5) cases – Intel, L’Oréal (against Bellure) and Interflora. This detailed analysis of recent cases which considered "taking unfair advantage" and "detriment" in relation to earlier marks with reputation is instructive.

In connection with the BOTOX® trademark, the advocate general stated in his opinion at paragraph 36:

“It is apparent from all the grounds of the judgment under appeal that the existence of parasitic intent is inferred from a number of findings which concern, on the one hand, the fact that Helena Rubinstein and L’Oréal opted to use in their marks a prefix which reproduces almost all of the earlier mark (ie BOTOX®) – a decision which, in the view of the General Court and, before it, the Board of Appeal, cannot be justified by the intention to refer to the botulinum toxin which, moreover does not form part of the goods covered by the contested marks – and, on the other, the characteristics of the earlier mark, that is to say, its strong distinctive character, owing also to its uniqueness and widespread reputation. Contrary to the assertions made by the appellants, therefore, the General Court specifically made an overall assessment, in line with the case-law of the Court of Justice referred to above, of the factors relevant to the case. In those circumstances, the appellants’ argument that the determination of parasitic intent is not supported by any evidence is unfounded."

The whole opinion is available at http://curia.europa.eu/juris/document/document.jsf?docid=119516&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&cid=243667.

The Court of Justice of the European Union will issue its judgment later this year.