Action brought on 22 August 2008 - Helena Rubinstein v OHIM - Allergan (BOTOLIST)

(Case T-345/08)

Language in which the application was lodged: English

Parties

Applicant: Helena Rubinstein, SNC (Paris, France) (represented by: A. von Mühlendahl and J. Pagenberg, lawyers)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other party to the proceedings before the Board of Appeal: Allergan, Inc. (Irvine, United States)

Form of order sought

Annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 28 May 2008 in case R 863/2007-1;

Dismiss the appeal filed by the other party to the proceedings before the Board of Appeal against the decision of the Cancellation Division of the defendant taken on 28 March 2007 in case 1118 C;

Order the defendant to pay the costs of the proceedings, including those incurred by the applicant before the Board of Appeal; and

Order the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings, including those incurred by the applicant before the Board of Appeal, should it become an intervening party in this case.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The word mark "BOTOLIST" for goods in class 3 - Community trade mark registration No 2 686 392

Proprietor of the Community trade mark: The applicant

Party requesting the declaration of invalidity of the Community trade mark: The other party to the proceedings before the Board of Appeal

Trade mark right of the party requesting the declaration of invalidity: Community trade mark registration No 2 015 832 of the figurative mark "BOTOX" for goods in class 5; Community trade mark registration No 2 575 371 of the figurative mark "BOTOX" for goods in class 5; Community trade mark registration No 1 923 986 of the figurative mark "BOTOX" for goods in class 5 and 16; Community trade mark registration No 1 999 481 of the word mark "BOTOX" for goods in class 5; various registrations of the trade mark "BOTOX" in the Member States of the European Communities.

Decision of the Cancellation Division: Rejection of the application for a declaration of invalidity

Decision of the Board of Appeal: Annulment of the decision of the Cancellation Division

Pleas in law: Infringement of Article 8(5) of Council Regulation No 40/94 as there is no proof that the earlier trade marks had reputation in the relevant point in time, as the conflicting trade marks are not sufficiently similar, as there is further no proof that the use of the registered Community trade mark subject of the application for a declaration of invalidity would be detrimental to the distinctiveness and reputation of the earlier trade marks and that there is no proof that the applicant acted without due cause when adopting the registered Community trade mark subject of the application for a declaration of invalidity; infringement of Article 73 of Council Regulation No 40/94 as the contested decision does not state the reasons on which it is based.

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