ECJ Refuses Trade Marks Freeriding on Reputation of Botox

On 10 May 2012, the Court of Justice of the European Union (“ECJ”) upheld a judgment of the General Court (“GC”) which had dismissed actions brought by Helena Rubenstein SNC and L'Oréal SA against a decision of OHIM - the EU's trade mark registration office - to annul the companies' trade marks.

In 2003, OHIM registered the word signs 'BOTOLIST' and 'BOTOCYL', submitted by Rubenstein and L'Oréal respectively, as Community trade marks in respect of cosmetic products. In 2008, both trade marks were declared invalid by OHIM following an application for annulment by Allergan Inc, which owned earlier Community and national trade marks relating to the word sign 'BOTOX'. Rubenstein and L'Oréal appealed OHIM's decision before the GC. In 2010, the GC dismissed the companies' actions and confirmed OHIM's findings. The two companies subsequently appealed to the ECJ.

In its recent judgment, the ECJ rejected the appeal and found that the GC had not erred in law in concluding that OHIM's decision was valid. The GC was entitled to uphold OHIM's main finding that, although the later marks would not necessarily be confused with 'BOTOX', the use of 'BOTOLIST'/'BOTOCYL' would nevertheless take unfair advantage of the distinctive character and reputation acquired by the earlier 'BOTOX' mark. Furthermore, the GC had correctly analysed whether the earlier BOTOX marks had a reputation with the general public and health-care professionals in the UK on the basis of the evidence adduced by Allergan, which included articles published in scientific journals or English newspapers and the inclusion of the word ‘BOTOX’ in English dictionaries.