BOTOLIST et BOTOCYL annulées à cause du BOTOX

The General Court confirmed on December 16, 2010, the cancellation of the registered Community trademarks BOTOLIST (filed by Helena Rubinstein) and BOTOCYL (filed by L’Oréal SA), both covering products of class 3, on the basis of the earlier BOTOX trademarks (word and word with a device)

The relevant public was regarded as liable to make a link with BOTOX trademarks because of the prefix BOTO which is unusual in the pharmaceutical or cosmetic fields, not descriptive and not an abbreviation for ‘botulinus’ or ‘botulinum’.   

 The Court also concurred with the Board’s previous findings that ‘pharmaceutical preparations for the treatment of wrinkles’ and ‘cosmetics among other creams’ were ‘related market sectors’.  

 Procedurally, documents supporting the reputation and dated from a period posterior to the filling of the challenged trademarks were found to have evidential value as they enabled conclusions to be drawn to a situation existing on that date, (trademark reputation being acquired progressively).  

 This decision is further confirms the extent of BOTOX monopoly and its reputation with a couple of other UE decisions. This brings to avoid candidate names with the prefix BOTO in classes 3 and 5 at least on the Community level.

 In our view, the choice of BOTO(X) can not be regarded however as neutral to the extent that it allows a certain link with products containing botulinus or botulinum. The Community position also contradicts with the approach of French High Court which held on July 1st, 2008, that BOTOX …had become usual for botulic toxin products!


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