Cosmetic giants L’Oreal and Helena Rubinstein respectively tried to register BOTOCYL and BOTOLIST as CTMs for cosmetic products. Perhaps not surprisingly, BOTOX brand owner Allergan challenged and following a reference to the CJEU the Advocate General has indicated his views. Miah Ramanathan reports.
Who: Helena Rubinstein SNC and L'Orėal SA (the "Appellants") Allergan, Inc ("Allergan")
Where: An opinion given by Advocate General Mengozzi in respect of a decision of the EU General Court
When: 16 February 2012
Law stated as at: 5 March 2012
Advocate General Mengozzi (the "AG") has delivered an opinion advising the CJEU to dismiss the appeal brought by the Appellants, Helena Rubinstein and L'Oreal, against the judgment of the EU General Court to grant Allergan, the owner of the "BOTOX" mark, a declaration of invalidity.
The application was made pursuant to Articles 52(1)(a) and 8(5) of the CTM Regulation (40/94/EEC now replaced by 207/2009/EC), in respect of the Community trade marks ("CTM") owned by the Appellants for the word marks "BOTOLIST" and "BOTOCYL" covering cosmetic goods in class 3.
The proceedings to date
In October and November 2003 respectively, the Appellants successfully registered the CTMs for the word signs BOTOLIST and BOTOCYL for cosmetic goods in class 3, namely creams, lotions and gel products not containing botulinum toxin, commonly known as "botox".
In February 2005, Allergan, the owner of a portfolio of earlier CTMs and national figurative and word marks incorporating the word "BOTOX" for goods in class 5, including pharmaceutical preparations for the treatment of wrinkles, filed an application with OHIM for a declaration of invalidity in respect of the BOTOLIST and BOTOCYL marks.
At first instance OHIM rejected Allergan's applications, a decision which Allergan successfully appealed against in May 2008. The Appellants subsequently appealed to the EU General Court. In the December 2010 joined proceedings, the EU General Court upheld the decision of OHIM's Board of Appeal and dismissed the appeal.
The proceedings are now en route to the CJEU.
The AG's opinion
The AG's opinion advises the CJEU to dismiss the appeal brought by the Appellants. In the opinion, the AG considers and rejects each of the four grounds of appeal argued by the Appellants and endorses the EU General Court's finding that the BOTOLIST and BOTOCYL marks take advantage of the distinctive character and/or repute of the BOTOX mark.
The four grounds of appeal argued by the Appellants
1. The EU General Court has infringed Article 52 of the CTM Regulation, read in conjunction with Article 8(5) thereof
Article 52 provides that a CTM shall be declared invalid on application to OHIM if there is an earlier existing mark and the conditions set out in Article 8(5) are satisfied. Article 8(5) provides that, upon opposition by the owner of an existing mark, the trade mark applied for will not be registered if it is identical or similar to the existing mark and has been applied for in respect of dissimilar goods or services to those for which the existing mark is registered, if the earlier mark has a reputation in the Community and the use, without due cause of the trade mark applied for, would take unfair advantage of, or be detrimental to, the distinctive character and/or repute of the existing mark.
Under this first ground of appeal the Appellants argued that the EU General Court had made an error in law:
(a) by basing its decision on two BOTOX marks owned by Allergan and registered in the UK when OHIM had based its decision on the BOTOX figurative and word CTMs.
The AG rejected this complaint finding that OHIM had in fact considered the portfolio of BOTOX marks owned by Allergan and had not restricted its deliberation to the CTMs.
(b) by accepting the evidence submitted by Allergan as proof of the reputation of the BOTOX marks with the relevant public and failing to determine the territory in which the reputation should be assessed.
In rejecting this complaint the AG found that the relevant public was composed of the general public. This also covered health professionals, hence it was not necessary to carry out a separate examination of the evidence to assess the reputation of the BOTOX marks amongst the (1) general public and (2) health professionals.
The AG also found that the EU General Court had established that the UK was the relevant territory in respect of which the reputation of the BOTOX marks should be assessed.
The AG was of the view that the Appellants were attempting to bring about a re-examination of the evidence by the CJEU and noted that this ground of appeal was clearly inadmissible as the CJEU does not have the jurisdiction to re-examine evidence in appeal proceedings save where the evidence has clearly been misinterpreted.
The Appellants had also contested the inclusion in evidence of a decision of the UK Intellectual Property Office given in proceedings in April 2005 brought by Allergan against a third party's BOTOMASK mark in the UK. The AG rejected this argument on the basis that a decision adopted in difference proceedings could, where relevant, be taken into account by the EU General Court for the purposes of assessing the facts of the case at hand.
(c) in its finding that the relevant public would establish a link between the marks BOTOLIST and BOTOCYL and the earlier mark BOTOX since such a link cannot be based on the common element "BOT" or "BOTO" which is descriptive of a product containing botulinum toxin.
The Appellants were attempting to get the CJEU to revisit the ruling on the distinctive character of the "BOTOX" mark and the common elements "BOT" and "BOTO". However, the CJEU does not have jurisdiction to re-assess the distinctive character of marks and on this basis the AG rejected this third complaint under the first ground of appeal.
(d) in its conclusion that the BOTOLIST and BOTOCYL marks took unfair advantage of the distinctive character or repute of the BOTOX mark.
In L'Oreal (Case C-487/07 L'Oreal and Others  ECR I-5185) it was found that where "a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or repute of that mark".
Allergan argued that the Appellants had registered the BOTOLIST and BOTOCYL marks to take advantage of the distinctive character and repute acquired by the BOTOX mark for the treatment of wrinkles. In upholding the decision of the OHIM Board of Appeal to grant Allergan's application, the EU General Court agreed that the risks posed to the BOTOX mark were sufficiently serious to justify the decision to invalidate the BOTOLIST and BOTOCYL marks.
In its appeal the Appellants had also failed to do any more than assert that there was no proof that they had intended to "free-ride" on the "coat-tails" of the BOTOX mark.
The AG rejected the Appellant's first ground of appeal.
2. The EU General Court has infringed Article 115 of the CTM Regulation, read in conjunction with rule 38(2) of Regulation No. 2868/95
Article 115(5) provides that the notice of opposition and an application for revocation or invalidity are to be filed in one of the languages of OHIM. Rule 38(2) provides that any evidence that is filed but is not in the language of the proceedings should be followed with a translation within 2 months of the date of filing. If the applicant fails to file the translation, OHIM should not take the un-translated document into consideration in its deliberations.
The Appellants argued that Allergan had failed to provide French translations of English language articles. The OHIM Board of Appeal took the view that rule 38(2) did not provide for such a penalty if translations were not filed in the 2 month period. The AG disagreed with this approach and confirmed that the EU General Court had erred in confirming the admissibility of such evidence. However, the irregularity did not prevent the Appellants from defending themselves effectively in the first instance or in the present proceedings. The Appellants had also admitted that they understood the content of the English language articles.
Therefore, whilst the Appellants had pointed out a procedural irregularity, the AG rejected this second ground of appeal.
3. The EU General Court has infringed Article 63 of the CTM Regulation by substituting its own appraisal of the evidence for that of the OHIM Board of Appeal
The AG acknowledged that the judgment of the EU General Court did show a more detailed analysis of the evidence filed by Allergan. However, the findings of the EU General Court did not differ from those of the OHIM Board of Appeal and on this basis the AG rejected the third ground of appeal.
4. The EU General Court failed to criticise the OHIM Board of Appeal for failing to state the reasons for its decision, required under Article 73 of the CTM Regulation
Article 73 requires EU institutions to state clearly and unequivocally the reasons for its decisions. The OHIM Board of Appeal had decided that the BOTOX mark had a reputation in all the Member States as: a consequence of the marketing of the BOTOX products; the indirect publicity resulting from media coverage; and the awareness of the general public of botulinum toxin and its use for the treatment of wrinkles. The AG was of the opinion that the decision of the OHIM Board of Appeal was sufficiently clear to identify the reasons behind its decision. The AG confirmed that the OHIM Board was not required to give an account of the examination of each individual item of evidence filed. The AG rejected this fourth and final ground of appeal.
Why this matters:
The AG's opinion may or not be followed by the CJEU, but it illustrates the distinctive character and reputation of the BOTOX mark across the Community and accordingly the strength of the protection afforded to the BOTOX mark against identical or similar marks.
The Appellants pointed out a number of procedural irregularities, however, it is clear from the AG's opinion that it is difficult to challenge a decision of the EU General Court unless on a point of law or in circumstances where it has failed to perform an overall assessment of the relevant facts.