When the ECJ decided Intel in November 2008 (C-252/07), many sensed the demise of blurring as a practical ground for challenging trademark registrations in the EU. The ruling requiring claimants who alleged dilution through blurring to prove an actual, or likely, change in the economic behaviour of consumers seemed too steep a hill for most to climb. The only clear proof was actual or likely confusion, in which case the dilution claim was essentially superfluous.
Now, however, the tables may be turning following decisions of the General Court that upheld blurring of distinctiveness claims based mainly on submissions that the use of later similar marks would undermine the "specificity and uniqueness" of an earlier brand. Reports of the demise of dilution, it seems, may have been greatly exaggerated.
The BOTOX Cases
The cases in question (T-131/09 and joined cases T-345/08 and T-357/08) related to a CTM opposition and applications for invalidity brought by Allergan, Inc. based on earlier CTM, UK and national rights in BOTOX in Class 5 for pharmaceutical preparations for the treatment of, inter alia, wrinkles.
The opposed mark was BOTUMAX, covering inter alia cosmetics in Class 3, pharmaceutical and sanitary preparations for medical purposes in Class 5, and printed matter in Class 16, of Farmeco AE Dermokallyntika.
The challenged registrations were for BOTOLIST of Helena Rubinstein SNC and BOTOCYL of L'Oreal SA, both covering goods in Class 3 including cosmetics.
In both cases, Allergan pleaded similarity of marks, goods and a likelihood of confusion under Article 8 (1) (b) CTMR. It also pleaded that its earlier registered BOTOX marks had a reputation, that BOTUMAX, BOTOLIST and BOTOCYL were all similar to BOTOX, and that the use without due cause of the three later marks would take unfair advantage of, and would be detrimental to, the distinctive character and repute of the BOTOX marks, under Article 8 (5).
Allergan lost across the board at first instance, but its perseverance on appeal was rewarded with findings that all the marks were similar to BOTOX visually and phonetically, with no conceptual comparison being possible since the marks had no meaning. On Article 8 (1) (b) the appeal findings were mixed: in BOTUMAX, the Fourth Board of Appeal found similarity between some of the Class 3 and 16 goods (which could include scientific and beauty publications) and a likelihood of confusion, taking into account the strong inherent distinctiveness and the reputation of the BOTOX mark. In BOTOLIST and BOTOCYL, the First Board of Appeal rejected that claim. However, in respect of all three marks, the appeal boards found that BOTOX had accrued a substantial reputation in respect of wrinkle treatments, and that the use of the later marks would result in a link being made in the public mind with the BOTOX mark, which was likely to be detrimental to the distinctiveness of the BOTOX mark by diminishing its exclusive capacity to distinguish Allergan's goods alone. Both Boards therefore upheld the case under Article 8 (5).
Smoothing Out the Wrinkles
All three defendants appealed further to the General Court, which nonetheless upheld the appellate findings. In particular, the General Court was satisfied that BOTUMAX, BOTOLIST and BOTOCYL were similar to BOTOX, citing the unusual nature of the prefix "BOTO-" in respect of goods in Classes 3 and 5, the greater weight attached to similarities at the beginnings of marks, and, in the case of BOTUMAX, the presence of the identical letter -X at the end of the mark. The General Court was, moreover, persuaded by substantial evidence of use, promotion and media coverage relating to BOTOX wrinkle treatments that BOTOX had acquired enhanced distinctiveness through use, which in its view increased the likelihood of confusion with BOTUMAX, in particular.
In respect of BOTOLIST and BOTOCYL, the Board of Appeal's finding that there was no likelihood of confusion was not under review, so the General Court did not consider whether Allergan should have succeeded under Article 8 (1) (b) in that case as well as under Article 8 (5).
In respect of all three marks, however, the General Court was satisfied that Allergan had proved that the BOTOX mark had acquired a substantial reputation within the EU and the UK in particular. The fact that some of the media coverage relied on as evidence post-dated the material dates in the proceedings or had not been translated into the language of proceedings did not undermine the fact that such coverage had manifestly taken place, that the "gist" of the articles was clear, and that their existence pointed to a reputation acquired over time and established by the material dates.
Having satisfied itself that the appeal boards had been right to find a reputation, the General Court concluded that in light of the substantial reputation and inherent distinctiveness of BOTOX, which was an invented word, the relevant public was likely to make a mental link between the later marks and BOTOX. This would "unquestionably result in the dilution of the distinctive character of the widely known earlier trade mark," not only in relation to cosmetics and pharmaceutical preparations, but also in relation to printed matter in Class 16, which could include magazines and specialised medical or scientific journals. Consequently, the General Court upheld the appeal findings that the use of the later marks without due cause would be detrimental to the distinctive character and repute of the BOTOX marks under Article 8 (5).
In BOTUMAX, the General Court also affirmed that the use of the later mark would take unfair advantage of the considerable repute attaching to the BOTOX mark. However, given the finding that the marks were similar (which reasonable people might dispute), the ruling as to unfair advantage is less surprising than the one based on detriment to distinctiveness, or dilution of the "blurring" variety. Indeed, it was widely assumed after Intel that it would be difficult, if not impossible, to demonstrate detriment to distinctiveness in cases where there was no likelihood of confusion. The ECJ's introduction of a requirement to prove a change, or likely change, in the economic behaviour of the relevant consumer substantially raised the bar. The problem of how to prove a likely change in consumer purchasing habits based on a pure mental link without any likelihood of confusion confounded many, if not most. A likelihood of confusion would certainly suffice, but if that were to be required then Article 8 (5) would not have had the reach that it was understood to have, and would not, in particular, encompass "pure dilution" cases where the real complaint was not confusion, but rather the whittling away of a mark's cachet or exclusivity.
It is difficult to see how Allergan overcame that obstacle. The decisions do not identify any submissions or evidence on the point, and it is arguable that if the decisions were further appealed, the ECJ might find the reasoning on the economic behaviour point flawed, or lacking entirely.
Assuming the decisions stand, though, they indicate that the doctrine of dilution is not quite the lame duck that many thought it was after Intel, and that it can be invoked successfully in cases where an earlier mark has both a substantial reputation and strong inherent distinctiveness. That combination seems to be key, since the Boards of Appeal and the General Court both appear to have been swayed by the strong inherent distinctiveness of BOTOX as an invented word with no meaning. If the word had possessed only average or weak inherent distinctiveness, and the case had been based on reputation only, the decisions could well have been different. Those who argue cases under Article 8 (5) CTMR or equivalent national provisions would do well to ensure that their evidence addresses inherent as well as acquired distinctiveness.
For many, though, the findings on similarity of marks in these cases are uncomfortable. Many might question whether on any reasonable view BOTUMAX, BOTOLIST and BOTOCYL could really be regarded as similar to BOTOX based on anything other than a stilted, formulaic legal comparison. Moreover, the finding that BOTOX had such a substantial reputation should arguably have worked in the defendants' favour, since the better people know and recognise BOTOX, the less likely they are to remember it imperfectly and to take BOTUMAX, BOTOLIST and BOTOCYL as being BOTOX or derivative brands.
Nonetheless, this spate of BOTOX cases shows that Allergan has been fairly successful so far in its campaign to clean up the Registers by clearing away registrations for marks with BOT- prefixes in Classes 3 and 5. How much further it can go remains to be seen, but any headway it makes can only strengthen the BOTOX brand by increasing the amount of clear water around it. This in turn will strengthen Allergan's claim to protectable exclusivity yet further.
Brand owners with similar aspirations to exclusivity should take note. Register clearance activities of the type embarked on by Allergan may not only give rise to immediate rewards, but may in themselves create more extensive rights in the future. Not all brand owners will share Allergan's perhaps surprising success against dubiously similar marks; but the clearer the registers and marketplaces are of real conflicts, the easier it will be to keep them that way.