Fat lips and lost writs: CJEU refuses bids by L'Oreal and Helena Rubinstein to register Botox-like trade marks

What the AmeriKat would look like
if she ever tried Botox.
 Its not a good look for her.
Last Thursday, after seven years of coursing through various boards of appeals and courts in Europe, the Court of Justice for the European Union (CJEU) held in their robust judgment in Rubinstein and L'Oreal v OHIM (Case C-100/11) that the General Court did not err in law in concluding that L'Oreal's mark for BOTOCYL and Helena Rubinstein's mark for BOTOLIST took advantage of the distinctive character and reputation of Hollywood's starlets' anti-ageing cocktail of choice, BOTOX. The Press Statement states that
"The General Court 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, such as press articles published in scientific journals or English daily newspapers and the inclusion of the word ‘BOTOX’ in English dictionaries. Furthermore, the General Court was legitimately able to conclude that there was a link between the marks concerned and, after an overall assessment of the relevant evidence, that the disputed marks sought to take advantage of the distinctive character and reputation acquired by the BOTOX trade marks."
The Facts

Ten years ago, cosmetic and beauty companies Helena Rubinstein and L'Oreal filed separate, but similar, Community trade mark applications for the word marks BOTOLIST and BOTOCYL, respectively, for goods in Class 3 and in Fall 2003, the marks were registered.   Class 3 covers the goods sold in the shiny, brightly lit areas located on the ground floor of every reputable department store, i.e. cosmetics and products for primping and puckering.  Class 3 namely covers goods and services for "perfumes, bath and shower gels, cosmetics among other creams, milks, lotions, gels and powders for face, body and hands...etc".

Allergan Inc is the manufacturer and registered proprietor of Botox.  Botox is Allergan's best selling drug having brought in $415 million profit in the last quarter.   Botox is comprised of purified botulinum toxin which is injected into muscles and nerves to manage pain in muscle and joint conditions.  This past week Botox was given the go ahead by the UK's National Institute for Health and Clinical Excellence (Nice) to be recommended in the UK for treatment for migraine sufferers.  More importantly Botox decreases the appearance of wrinkles and literally injects an appearance of youthfulness in its recipients.  

Three years after L'Oreal's and Helena Rubinstein's marks were registered, in February 2005, Allergan applied for a declaration of invalidity of the two marks under paragraph 1(a) of Article 52 of the Community Trade Mark Regulation (No. 40/94) based on its marks for BOTOX primarily registered in 1991 and recently in 2003 for Class 5 goods which covers "pharmaceutical preparations for the treatment of..muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperydrosis, sports injuries....".  

The rival to Elizabeth Arden, the AmeriKat
is fascinated with Helena Rubinstein and Arden's
story of establishing their business in the US 100 years
ago having watched the PBS documentary
"The Powederand the Glory" the is past Christmas.
Under paragraph 1(a) of Article 52, a Community trade mark must be declared invalid if an earlier trade mark fulfils the conditions set out in Article 8(1) or 8(5) of the Regulation, following an application to OHIM.  Under Article 8(5) - relative grounds of refusal - Allergan argued that BOTOLIST and BOTOCYL were identical or similar marks to BOTOX, were registered for dissimilar goods and that BOTOX had a reputation in the Community or Member State which the use of BOTOLIST and BOTOCYL took unfair advantage of, or which was detrimental to the distinctive character or repute of BOTOX.  Allergan also based their grounds on Articles 8(1)(b) and 8(4) of the Regulation.

In Spring 2007, the Cancellation Division rejected Allergan's applications for a declaration of invalidity for BOTOLIST and BOTOCYL. Allergan appealed and in June 2008 the Board of Appeal of OHIM held that although there was no likelihood of confusion between BOTOLIST and BOTOCYL with BOTOX, Allergan's applications for invalidity on the basis of Article 8(5) were well founded.  Helen Rubinstein and L'Oreal then brought separate appeals to the General Court of OHIM for annulment of the Board's decision.  The two cases were joined and in 2010 the General Court issued its decision in December 2012.

The General Court's decision

On similarity of the marks, the General Court upheld the reasoning of the Board of Appeal and stated that all of the marks used the prefix "bo to" and that in Botox's case "bo tox" did not stand for 'botulinum' and 'toxin".  Even if it did, the sign would have still acquired a distinctive character, inherent or through use, in the UK at least.  Further, the goods covered by the marks, although different, "related to market sectors", i.e. "pharmaceutical treatments for wrinkles as opposed to cosmetic treatments for wrinkles.

OHIM - The AmeriKat has never understood
this logo - why the yellow circle in the middle?
Because Allergan relied, amongst others, on the earlier national UK trade mark registrations for BOTOX, the General Court, when assessing BOTOX's reputation, examined the volume of sales of the products marketed under BOTOX, the promotion of that mark in articles published in English scientific journals, the media coverage, particularly in the English press, the inclusion of the word BOTOX in English language dictionaries and decisions of the UK IPO and a customer survey carried out in the UK in 2004.  Helena Rubinstein and L'Oreal disputed the admissibility of press articles published after the date that BOTOLIST and BOTOCYL had been applied for, however the General Court dismissed this argument stating that
"although the reputation of an earlier mark must be established as at the filing date of the application for the disputed mark, documents bearing a date after that date cannot however be deprived of evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date."
Despite several more arguments from Helena Rubinstein and L'Oreal regarding the admissibility of Allergan's evidence of BOTOX's reputation, the General Court dismissed them all and stated:
"the size of the market share of BOTOX in the United Kingdom, 74.3% in 2003, like the degree of awareness of the trade mark of 75% among the specialised public accustomed to pharmaceutical treatments against wrinkles, is sufficient to substantiate the existence of a considerable degree of recognition on the market" 
Therefore, the General Court held that the relevant public  - the general public and health care professionals - would naturally be led to establish a link between BOTOLIST and BOTOCYL and BOTOX even before associating the disputed marks with botulinum. Further, the General Court held that the marks were intended to take advantage of the distinctive character and repute acquired by BOTOX for the treatment of wrinkles which would have the effect of decreasing the value of the mark. Those risks, held the General Court, were sufficiently serious and real to justify the application of Article 8(5). Indeed, the General Court observed that Helena Rubinstein and L'Oreal had acknowledged at the hearing that even though their products did not contain the active ingredient in BOTOX - botulinum toxin - they nevertheless intended to take advantage of the image associated with that product - i.e. youthfulness, decrease of wrinkles, etc. Helena Rubinstein and L'Oreal then appealed to the CJEU.  

The Court of Justice's decision

Botox's branding educates consumers
 that"There is only one Botox Cosmetic", i.e.
you don't count BOTOCYL and BOTOLIST
Helena Rubinstein ("HR") and L'Oreal based their appeal against the General Court's decision on four grounds of appeal - the first ground going to the heart of the substantive case while the remaining three grounds were mainly procedural  law questions.  The CJEU dismissed all grounds and for the purposes of this post the AmeriKat examines the four elements of the substantive appeal:

1.  HR and L'Oreal argued that the General Court erred in finding that the examination of Allergan's application for invalidity could be carried out by reference to two of its earlier marks, registered in the UK, which the Board of Appeal had not based its decision on.  They argued that the Board of Appeal had based its decision entirely on the earlier Community trademark No. 2015832 for the figurative sign BOTOX.
The CJEU held that Helena Rubinstein and L'Oreal had pitched this ground "in a general way"  but did "not put forward any arguments at all to substantiate that line of reasoning."  Nevertheless, the CJEU said that Allergan's declaration for invalidity was based on a number of national and Community figurative and word marks relating to BOTOX of which almost all were filed before the BOTOLIST and BOTOCYL applications were filed.  The General Court had held that the Board of Appeal had not followed the approach of the Cancellation Divisions which had based its decision based on the registration of the figurative BOTOX mark (No. 2015832).  The Board had found that reputation had been acquired for BOTOX's Community and national figurative and word marks registered before the junior marks and that the contested decision did not refer to the figurative element of Community trade mark No. 2015832.  As such, the General Court was permitted to confine its review to the earlier UK national trade marks since the UK was the territory which Allegran had produced the most evidence.  
The faceless composition of the general public -
the one on the right is a health care professional
2.  HR and L'Oreal argued that the General Court erred in finding that BOTOX had a reputation.  HR and L'Oreal did not dispute that the relevant pubic in this case consisted of the general public and health-care professionals, but they argued that the General Court did not specifically consider whether the earlier BOTOX marks enjoyed a reputation within both of those categories, nor did the Court identify the relevant territory where the BOTOX marks were considered to have a reputation. They also argued that the evidence of reputation - media coverage, sales volume, etc - were not probative and/or were distorted.
The CJEU made quick work of these arguments.  The Court held, as OHIM had stated, that in principle if a trade mark enjoys a reputation with the general public, it must be assumed that the mark also is also known to health-care professionals who also make up the general public.  Further, because the General Court confined their examination to two UK national marks it must be inferred that the relevant territory was the UK.  Finally, on evidence, the Court was right assess the weight of the evidence by taking into consideration an overall view of the evidence and not on an evidence-by-evidence basis which was argued by HR and L'Oreal.  In so far as they had been disputing the probative force of some of the evidence, such as the volume of sales of BOTOX, the CJEU stated that  
"it need only be stated that their true goal in pursuing that line of argument is to obtain a fresh assessment of that evidence before the Court of Justice."
3.  HR and L'Oreal argued that the General Court erred in finding the existence of a link between the earlier BOTOX marks and BOTOCYL and BOTOLIST on the basis of the common elements "bot" or "boto".  First, HR and L'Oreal argued that those link elements were descriptive or generic because they referred to "botulinum toxoin".  Second, HR and L'Oreal argued that an applicant must be allowed to include elements of an earlier mark in so far as those elements are descriptive.  
The CJEU held that this first assessment by the General Court was an assessment of fact.  Under Articles 256 TFEU and Article 58 of the Statute of the Court of Justice of the European Union, appeal lies only on points of law.  The General Court's assessment of facts does not constitute a question of law subject to the CJEU's review powers (unless the evidence produced is distorted).  On the second argument, the Court stated that this line of argument relied on the premise that the elements "bot" or "boto" are descriptive.  However, the General Court had held that those elements were not descriptive.   The CJEU dismissed HR and L'Oreal's arguments.
The beauty of having fur, is that one
can never see your wrinkles or
frown lines....
4.  HR and L'Oreal argued that the General Court erred in accepting that there was an established risk of detriment to the reputation of BOTOX by BOTOLIST and BOTOCYL.  HR and L'Oreal argued that their marks may have contained a reference to botulinum toxin but they did not seek or intend to be associated with the BOTOX mark, nor could they be associated with the mark which was registered in respect of pharmaceutical products subject to a medical prescription.
The CJEU stated that although Allergan has to show that the use of BOTOLIST and BOTOCYL would take unfair advantage of, or be detrimental to, the distinctive character or repute of BOTOX it is not required, as the General Court held, to demonstrate actual and present injury to the BOTOX mark as long as it can adduce prima facie evidence of a real future risk of unfair advantage or detriment.  The General Court took into consideration various factors such as the fact that the prefix "boto" was common to all the marks at issue, that the prefix and the elements were not descriptive, that BOTOX had acquired a distinctive character, that the goods fell within related market sectors, and that the relevant public would establish a link between the marks before they associated the later marks with "botulinum".   The CJEU therefore held that the General Court was correct, after analyzing these various factors which showed a link between BOTOX and BOTOLIST and BOTOYL, that the later marks sought to take advantage of the distinctive character and repute acquired by BOTOX.  The touchstone throughout all of the General Court and CJEU's analysis was that during the hearing HR and L'Oreal had acknowledged that "even if their products did not contain the botulinum toxin, they nevertheless intended to take advantage of the image which was associated with that product, which is to be found in the BOTOX trade mark."

It is clear from the no-nonsense judgment that the CJEU was and is not going to entertain any grounds of appeal which although masquerading as an appeal on points of laws, are actually means of reopening the factual analysis that had been conducted by the General Court.  Together with the confirmation that the basis of the factual analysis of the evidence is that of a global assessment and not an evidence-by-evidence analysis unless evidence has been materially distorted, the decision emphasizes the high hurdles that an appellant will have to overcome when seeking to overturn the the findings of the General Court in these circumstances.  It must of course be said, however, that the nail in the coffin for L'Oreal and HR was the fact that the parties apparently acknowledged that the marks "intended to take advantage of the image" associated with product sold under the BOTOX mark.  Of course this raises the question: does taking advantage of a mark under Article 8(5) extend to taking advantage of the image associated with the product sold under that Mark and if so, how far can that harm extend?

The CJEU in L'Oreal v Bellure stated that the advantage arising from the use of a sign similar to a mark with a reputation is an advantage taken unfairly of the distinctive character or repute of the mark in order for the latter mark to benefit from the power of attraction, the reputation and prestige of the earlier mark and "to exploit without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."  The advantage taken is thus in relation to the reputation of the mark where that mark's reputation has been built up, amongst other things, by the marketing effort expended on the "mark's image".  This is not the same thing as saying that the advantage taken is that of the image associated with the product sold under the mark.  In the General Court's decision in Viaguara v OHIM in February, the Court phrased the question in respect of the image of the mark, not the image of the products sold under the mark.  Perhaps there is no difference in how the questions is framed, particularly where the only product sold under the BOTOX mark is, well, Botox, but where there are a variety of or a line of goods sold under the mark and the products themselves are less distinctive/reputable than the mark they are sold under, will these questions make a difference?

The AmeriKat is the first to admit that she is not intimately familiar with all 125+ CJEU trade mark decisions and who knows how many General Court decisions, so would be grateful if any readers can elucidate on this point and line of authority, or tell her if she is just being overly pedantic with how the CJEU has phrased its decision.  
Fat lips and lost writs: CJEU refuses bids by L'Oreal and Helena Rubinstein to register Botox-like trade marks Fat lips and lost writs:  CJEU refuses bids by L'Oreal and Helena Rubinstein to register Botox-like trade marks Reviewed by Annsley Merelle Ward on Sunday, May 13, 2012 Rating: 5

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