The Opposition Division of the OHIM issued on May 12, 2010 a decision involving amongst other the CTM registration No. 1999481 for BOTOX which was opposed against the BOTOXINA complex sign below.
The OHMI was convinced by the evidences filed (witness statement, annual reports, press clips, Courts decisions, extracts from dictionaries inter alia) that BOTOX was reputed and had acquired a high degree of distinctiveness through its use for “pharmaceutical preparations for the treatment of wrinkles”.
The opposition succeeded given the close similarity of BOTOX with the dominant element BOTOXINA of the CTM and the enhanced distinctiveness of the earlier mark…
Does anyone remember that French High Court upheld on July 1st, 2008, that BOTOX had become usual for botulic toxin products? Right, the OHIM is not bound by national precedents. But handling reputation shows how difficult it is to place the cursor at the appropriate level especially when excessive reputation leads to turn into a common name.