THE BOARDS OF APPEAL
DECISION
of the Second Board of Appeal
of 8 November 2017
In Case R 2371/2016-2
HOLZER Y CIA, S.A. DE C.V.
Campos Elíseos, 345, Piso 10 – Colonia
Chapultepec Polanco
México D.F. 11560
Mexico
EUTM Proprietor / Appellant
represented by LERROUX & FERNÁNDEZ-PACHECO, Claudio Coello, 124 4º,
28006 Madrid, Spain
v
Annco, Inc.
7 Times Square
New York New York 10036
United States of America
Cancellation Applicant / Respondent
represented by MISHCON DE REYA LLP, Africa House 70 Kingsway, WC2B 6AH
London, United Kingdom
APPEAL relating to Cancellation Proceedings No 9 135 C (European Union trade
mark registration No 11 197 647)
THE SECOND BOARD OF APPEAL
composed of S. Stürmann (Chairperson), C. Negro (Rapporteur) and
A. Szanyi Felkl (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
Decision
Summary of the facts
1 By an application filed on 18 September 2012, HOLZER Y CIA, S.A. DE C.V.
(‘the EUTM proprietor’) sought to register the figurative mark
for the following list of goods :
Class 14 Watches.
2 The application was published on 14 December 2012 and the mark was registered
on 25 March 2013.
3 On 20 March 2014, Annco, Inc. (‘the cancellation applicant’) filed a request for
declared the invalidity of of the registered mark for declared the invalidity of
goods.
4 The grounds of the request for declared the invalidity of were those laid down in
Article 59(1)(b) EUTMR (see paragraph 13 below), namely bad faith.
5 Moreover, the invalidity request was based on European Union trade mark
registration No 10 004 265 ‘ANNTAYLOR’ filed on 13 May 2011 and registered
on 13 October 2011 for inter alia ‘watches’ in Class 14 (invalidity and revocation
requests filed by the EUTM proprietor pending), Hungarian trade mark
registration No 207 828 ‘ANN TAYLOR’, Italian trade mark registration
No 1 234 798 ‘ANNTAYLOR LOFT’, United Kingdom non-registered trade mark
‘ANN TAYLOR’ and United Kingdom well-known mark ‘ANN TAYLOR’ for
‘clothing’. In relation to these earlier rights, the cancellation applicant invoked
Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article
60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR.
6 By decision of 4 November 2016 (‘the contested decision’), the Cancellation
Division declared the invalidity of the contested EUTM because it was filed in bad
faith.
7 The parties were given up to three rounds of observations. Ample evidence was
submitted by each party in support of their arguments.
8 The Cancellation Division gave, in particular, the following grounds for its
decision:
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
2
– The documents submitted by the cancellation applicant most relevant for the
claim of bad faith are the following:
o Annex 2: Affidavit of Laura Popp-Rosenberg, a partner in the law
firm representing the cancellation applicant in the USA, mentioning
the meeting in Dallas, Texas, USA between Ms Popp-Rosenberg and
three lawyers (Mr Jose Pablo Perez Zea, Mr Sebastian A. Suarez
Ventura and Mr Daniel Legaspi Jaime) from the firm representing
the EUTM proprietor (business cards of these three
gentlemen are
attached). Ms Popp-Rosenberg states that during the meeting she
was informed by Mr Suarez that Mr Holzer (the EUTM proprietor’s
CEO) had tried to contact the cancellation applicant to see if it
would grant him a license to make and sell ‘ANN TAYLOR’
watches in Mexico. Mr Suarez indicated that Mr Holzer had been
very upset by the fact that the cancellation applicant rebuffed his
efforts in the negotiations and that Mr Holzer then decided to
register the ‘ANN TAYLOR’ mark in the name of his company in
Mexico;
o Annex 3: Witness Statement of Nadine Jacobson, a partner in the
law firm representing the cancellation applicant stating that the
EUTM proprietor’s lawyers contacted her to object to the
cancellation applicant’s licensing the ‘ANN TAYLOR’ mark to third
parties, specifically to L’Amy America, because the EUTM
proprietor was under the impression that this company would
distribute watches under the mark in Europe;
o Annex 4: Affidavit of Roberto Arochi Escalante, trade mark counsel
of the cancellation applicant in Mexico, stating that in 2008 the
cancellation applicant filed a nullity action against the EUTM
proprietor’s Mexican trade mark ‘ANN TAYLOR’ based on the
cancellation applicant’s prior rights in the ‘ANN TAYLOR’ mark.
Mr Escalante states that in the course of those proceedings he spoke
with Jose Pablo Perez Zea, the counsel of the EUTM proprietor,
who told him that prior to Mr. Holzer filing applications for ‘ANN
TAYLOR’ in Mexico, Mr. Holzer had approached the cancellation
applicant, to no avail, with a request to become its supplier of
watches bearing the ‘ANN TAYLOR’ mark;
o Annex 17: A screenshot of a cancellation applicant’s Facebook page
‘LOFT’, a screenshot of an EUTM proprietor’s Facebook page
‘Ann Taylor Watches’ and a screenshot of the Facebook page
‘LOFT’ showing the wall with publications from other Facebook
users (from 2013). Among these posts, there is a post from ‘Ann
Taylor Watches’ including the link to the EUTM proprietor’s page
and an invitation to ‘take a look at our new fan page for AnnTaylor
Watches’;
o Annex 18: A report dated 31 July 2013 produced by Arochi,
Marroquin & Lindner, S.C. for the cancellation applicant. In this
report it is stated that Ann Taylor watches are sold by a Mexican
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
3
retailer company Tiempomania. Several photographs advertising
Ann Taylor watches were found on the Facebook page of this
company. Allegedly, these photos were used in the cancellation
applicant’s campaign in 2011 and 2013 and the watches were
digitally added. The first photograph includes the text in the bottom
right comer that translates ‘this image was obtained from public
domain’;
o Annex 21: Documents related to EUTM proprietor’s other trade
mark applications with the Mexican trade mark office containing
‘Ann Taylor’, one of them also includes ‘LANDS’ END’; documents
showing that ‘LANDS’ END’ is a brand used in the USA;
o Annex 25: Witness statement of Nadine Jacobson where the email
from Mr Sebastian Suarez is attached;
o Annexes 26 and 27: Affidavits of Roberto Arochi Escalante and Jose
Alejandro Luna Fandino, representatives of the cancellation
applicant in Mexico, stating that Mr Escalante repeatedly spoke with
the representatives of the EUTM proprietor and Mr Holzer himself
(Mr Luna Fandino only met with Mr Holzer) and both stated that
before filing for the Mexican trade mark in 2003, Mr Holzer had
approached the cancellation applicant with a request to obtain a
license agreement;
o Annex 31: The cancellation applicant’s observations from the
dispute over the EUTM proprietor’s Mexican mark dated 2008;
o Annex 35: Witness statement of Nadim Buchahim Munoz, manager
of Rozzen Distribution SA de CV which trades as Tiempomania,
stating that starting in 2013 it sold ‘ANN TAYLOR’ watches
provided by the EUTM proprietor. Mr Munoz knew the ‘ANN
TAYLOR’ brand for clothing and assumed that the watches were
licensed by the owner of that trade mark. In this belief,
Tiempomania took and altered the advertisement posters which they
knew had been used to promote ‘ANN TAYLOR’ clothing to use
them for their own advertisement campaign for the watches;
o Annex 37: Witness statement of Mario Tanus Herrera, an attorney
of Club Premier, a Mexican loyalty program. Attached are letters
dated 1 March 2012 and 16 October 2014 from the EUTM
proprietor presenting itself as ‘licensee and authorized
representative of ANN TAYLOR trade mark’;
o Annexes 39 to 42: EUTM proprietor’s Mexican applications for
other famous trade marks (‘SKAGEN’ filed in 2003, ‘Abercrombie
& FITCH’ filed in 2003, ‘MC LAREN’ filed in 2010, ‘MIDO’ filed
in 2012).
– The documents submitted by the
EUTM
proprietor most relevant for the
claim of bad
faith are the following:
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4
o Annexes 11-14 (of the submission dated 05/09/2014): Affidavits of
Andres Holzer Neumann (CEO of the EUTM proprietor), Jose
Pablo Perez Zea, Sebastian Suarez and Daniel Legaspi Jaime
(attorneys of the law firm representing the EUTM proprietor).
o Annex 9 (of the submission dated 24/06/2015): A statement by
Arturo Combe Arreche, commercial director of the EUTM
proprietor and the person whose signature appears on the letters
presented by the cancellation applicant in Annex 37, stating that Mr
Combe Arreche is not a lawyer, neither has he technical knowledge
about legal language and that when writing ‘being licensees and
authorized representatives of the following marks’ he was not
referring to any licence agreement between the EUTM proprietor
and any of those companies or marks but just intended to refer to a
company which was entitled to use those marks.
– As regards the EUTM proprietor’s knowledge of the cancellation applicant’s
identical or nearly identical mark (‘Ann Taylor’ or ‘AnnTaylor’) used mainly in
the USA in relation to clothing, the cancellation applicant argues that the
EUTM proprietor knew about it at the time of filing the contested mark
because of the trade mark dispute between the parties in Mexico concerning
the same marks which took place in 2008 (this is evidenced by for example
Annex 31 submitted by the cancellation applicant).
– The EUTM proprietor argues that filing the EUTM in 2012 only followed the
commercial strategy of expansion and that the relevant date to which the
intentions of the EUTM proprietor must be assessed is 2003 when it had filed
for registration of the same Mexican trade mark for watches. There is no
dispute between the parties about the fact that this Mexican trade mark was
filed in 2003 by the EUTM proprietor. However, the cancellation applicant
claims that the EUTM proprietor already knew about the cancellation
applicant’s mark at the time of filing of the first Mexican mark. To this effect,
the cancellation applicant filed several affidavits (annexes 2, 4, 26 and 27
submitted by the cancellation applicant) written by lawyers from firms
representing the applicant in the USA and Mexico who confirm that they met
with lawyers representing the EUTM proprietor or even with Mr Holzer (the
CEO of the EUTM proprietor) himself and were told that Mr Holzer had
attempted, before filing for the Mexican trade mark, to contact the
cancellation applicant in view of possible licence or distribution agreement for
‘Ann Taylor’ watches in Mexico. Upon criticism of the probative value of
such evidence from the EUTM proprietor, the cancellation applicant filed an
email dated 24 May 2013 from Sebastian Suarez (one of the EUTM
proprietor’s lawyers) to Nadine Jacobson (one of the cancellation applicant’s
lawyers) in which Mr Suarez gives details of Mr Holzer’s attempts, before
2003, to contact the cancellation applicant seeking negotiations about the
possibility of commercializing watches under the Ann Taylor mark.
– The EUTM proprietor very strongly objects to the submission of this email as
evidence and refers to several documents containing code of conduct for
lawyers. It requests that the email is considered to be illegal evidence and that
it is not taken into account. The Cancellation Division will take the email into
account. Ms Nadine Jacobson was the intended recipient of this email and she
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
5
decided to attach it to her affidavit in these proceedings. The email was thus
not obtained by any illegal means. The matter of possible breach of
confidentiality is an issue for potential disciplinary procedure before the
respective Bar Association or other such association; the EUIPO is not
authorized to assess this issue.
– It is noted that the EUTM proprietor does not contest the authenticity of the
email, nor does it argue that its contents are untrue. It merely objects to it
being accepted as evidence.
– Before the cancellation applicant submitted the above-mentioned email, the
EUTM proprietor had filed affidavits of three lawyers and Mr Holzer. One of
the lawyers is Mr Sebastian Suarez, the author of the abovementioned email.
In the affidavit, Mr Suarez states that he has no knowledge of a formal
request for the licensing of trade marks from the EUTM proprietor to the
applicant. After the EUTM proprietor was confronted with Mr Suarez’s email,
it claimed that this affidavit is not contradictory to the email because the email
indeed does not describe any formal license agreement request, since Mr
Holzer was never even accepted by the applicant for a meeting. This is true.
However, it shows that the evidence of the EUTM proprietor needs to be
interpreted literally word by word. Therefore, the statement in the affidavit
made by Mr Andres Holzer that he ignored the existence of any ‘ANN
TAYLOR’ trade mark for watches and that he was not aware of the existence
of any identical mark in Mexico, when he created the Mexican mark, has to be
understood as Mr Holzer not denying knowledge of the existence of the
cancellation applicant’s trade mark for clothing in the USA.
– In summary, the cancellation applicant provided evidence that the EUTM
proprietor knew about the cancellation applicant’s use of the mark for
clothing, not only at the time of filing of the EUTM but also already at the
time of filing of the EUTM proprietor’s first Mexican ‘ANN TAYLOR’ trade
mark. This evidence consists not only of affidavits by lawyers affiliated to the
cancellation applicant but also of an email sent by one of the lawyers of the
EUTM proprietor. The probative value of the latter is strong. The EUTM
proprietor merely casts doubts on the admissibility and probative value of
such evidence, while not denying the fact that it knew about the cancellation
applicant’s American trade mark. Moreover, should the contested mark not be
a copy of the cancellation applicant’s mark, the EUTM proprietor does not
provide any explanation as to how the mark was created. Whilst the mark is
formed by a not unusual English name and surname, the exact same
combination of the name and surname makes it harder to argue that filing for
exactly the same name was a mere coincidence. The explanation provided by
Mr Holzer that he was inspired by his mother’s name (Ana Neumann de
Holzer) is not convincing as it is a long way from ‘Ana Neumann de Holzer’
to ‘Ann Taylor’.
– The EUTM proprietor’s argumentation regarding the commercial logic by
expanding from Mexico to Europe could be a strong argument against the bad
faith claim if it had not been proven that the EUTM proprietor had known
about the cancellation applicant’s mark already at the time of filing of the
Mexican mark. In the light of the fact that already the first mark filed by the
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
6
EUTM proprietor was filed with the EUTM proprietor’s knowledge of the
applicant’s mark, this argument fades very much.
– The contested mark contains the applicant’s sign (‘Ann Taylor’ or
‘AnnTaylor’). In addition, it contains a figurative element and the hardly
visible initials ‘AT’. Despite the significant size of the figurative element, the
words ‘ANN TAYLOR’ are clearly the most relevant part of the mark as they
are the mark’s only clearly perceptible verbal elements. Moreover, they are
perfectly distinctive. It is reminded that verbal elements are normally more
important in a sign because consumers refer to the mark by the verbal
elements rather than describing the figurative ones. Since the applicant’s sign
is entirely included in the contested mark, where it retains an independent and
distinctive role, while the remaining differentiating elements are not of such a
character as to divert the overall impression created by the contested mark
from that created by the applicant’s sign, it has to be concluded that the marks
are similar.
– The EUTM proprietor argues that there can be no bad faith because the
contested mark does not enter the sphere of protection of the cancellation
applicant’s mark since watches and clothing are not similar products.
– Even though these goods cannot be regarded as similar on the basis of the
‘Canon’ criteria (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23), it is
undisputable that there is a close correlation between them, all being used to
improve a person’s image and attractiveness. Whilst the primary function of
watches is to show time, they can also be regarded as a fashion accessory
and/or social status indicator and consumers will, while purchasing a watch,
pay special attention to its design and appearance. Different watches will be
worn on different occasion to match the clothing and overall outfit. Moreover,
the cancellation applicant gives examples of brands known for clothing that
also offer watches (DKNY, Guess, Next etc.). Consequently, whilst it is true
that these goods are not considered similar within the meaning of the ‘Canon’
criteria, they belong to adjacent markets and are closely related. Therefore,
the EUTM proprietor’s bad faith cannot be excluded solely based on the fact
that the contested mark is registered for watches whereas the cancellation
applicant used its mark for clothing (see, by analogy, 12/01/2016,
R 3135/2014-2, ALEXANDER WANG / ALEXANDER WANG where bad
faith was found, although the contested mark was registered for cosmetics
whereas the cancellation applicant’s mark was used for design of clothing).
This applies in particular when the marks are identical (or nearly identical,
depending on whether or not a space is used between the first name and the
surname).
– Taking into account all the above, the Cancellation Division considers as
proven that the EUTM proprietor knew about the cancellation applicant’s
identical or nearly identical mark, used for goods belonging to a neighbouring
market, when filing for the contested mark and also when filing for the
Mexican mark in 2003.
– However, the circumstance that the EUTM proprietor knew about the use of
‘Ann Taylor’ by the cancellation applicant is insufficient, in itself, to allow for
the conclusion that the EUTM proprietor was acting in bad faith.
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
7
Consideration must, in addition, be given to the EUTM proprietor’s intention
at the time of filing the contested mark, a subjective factor which must be
determined by reference to the objective circumstances of the particular case.
– It was not shown that there was any contractual or pre-contractual
relationship between the parties (according to Mr Suarez’s email, Mr Holzer,
despite his attempt to meet with the cancellation applicant’s CEO, was not
accepted for a meeting and neither party in fact claims that the meeting took
place). Although, as mentioned above, the burden of proof of the existence of
bad faith lies with the cancellation applicant, when there has been no
contractual or pre-contractual relationship or, any kind of relationship where
good faith applies and imposes on the EUTM proprietor the duty of fair play
in relation to the legitimate interests and expectations of the other party with
regard to the trade mark at issue, as in the present case, it may result more
difficult to demonstrate the existence of bad faith (12/01/2016,
R 3135/2014−2, ALEXANDER WANG / ALEXANDER WANG, § 88).
– To illustrate the intentions of the EUTM proprietor when filing for the trade
mark, the cancellation applicant raises several issues:
o The EUTM proprietor posted a link (in 2013) to its ‘Ann Taylor
Watches’ Facebook page on the Facebook page of the cancellation
applicant, thus trying to make an association between the EUTM
proprietor’s watches and the cancellation applicant (Annex 17
submitted by the cancellation applicant);
o The Mexican distributor of the EUTM proprietor’s watches used (in
2013), for the purposes of advertising the watches, photographs
previously used by the cancellation applicant for its advertising
campaign which were digitally altered to contain the EUTM
proprietor’s watches. This is another attempt to create an association
between the EUTM proprietor’s products and the cancellation
applicant (Annex 18 submitted by the cancellation applicant);
o Two distributors of the EUTM proprietor’s products assumed that
the products were under a license from the cancellation applicant.
One of them made this presumption based on letters (from 2012 and
2013) from the EUTM proprietor saying that it was an authorized
representative and licensee of ‘ANN TAYLOR’ trade mark
(Annexes 35 and 37 submitted by the cancellation applicant);
o The EUTM proprietor also filed several other trade mark
application for famous brands (between 2003 and 2012) (Annexes
39 to 42 submitted by the cancellation applicant).
– The EUTM proprietor argues that these events and evidence postdate the
filing date of the contested mark, that there is no proof that it was the EUTM
proprietor who posted the link on the cancellation applicant’s Facebook page
and who digitally altered the applicant’s advertisement photographs, that the
distributors assumed the affiliation to the cancellation applicant without any
actions of the EUTM proprietor that would lead them to such assumptions
(the commercial director, author of the letters to one of the distributors, is not
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
8
a lawyer and by referring to the EUTM proprietor as a licensee of ‘ANN
TAYLOR’ mark he in fact did not mean licensee), and finally, the other marks
applied for by the EUTM proprietor were rejected on grounds other than bad
faith.
– It is true that most of the abovementioned happened after the filing of the
contested mark. On the other hand, even evidence referring to time outside of
the relevant time may contain information that sheds light on the situation as it
was at the relevant date. Events subsequent to the relevant date may make it
possible to confirm or assess more accurately the intentions of the EUTM
proprietor at the time of filing (see, by analogy, 27/01/2004, C-259/02,
Laboratoire de la mer, EU:C:2004:50).
– Whilst any of the individual points described above, referring moreover in
general to two years after the filing of the contested mark, would be
inconclusive as to the EUTM proprietor’s intentions at the time of filing,
considering all of them in combination, they are sufficient to demonstrate that
the EUTM proprietor’s intentions when it filed the application for the
contested mark were not honest. This conclusion is also supported by the fact
that the EUTM proprietor did not provide any reasonable explanation for any
of the points raised by the cancellation applicant.
– The most striking is perhaps the post on the cancellation applicant’s Facebook
page. The only reaction from the EUTM proprietor to this issue is that it
postdates the filing date and that there is no proof that it was the EUTM
proprietor who posted this. The cancellation applicant submitted a screenshot
of the wall of its Facebook page showing a publication made by ‘Ann Taylor
Watches’ from 22 July 2013 saying ‘there’s definitely no time to waste, so take
a look at our new fan page for AnnTaylor Watches’ and including the link to
the page ‘Ann Taylor Watches’ containing the name of the EUTM proprietor.
It is hard to imagine that the post which contains the EUTM proprietor’s
name and the link to the EUTM proprietor’s page could have been posted by
someone else than the EUTM proprietor. The Cancellation Division fails to
see how such a publication could have been made with honest intentions.
Whilst there is nothing technically untrue in the publication, the presence of
this post on the page of the cancellation applicant will undoubtedly lead the
not extremely attentive consumers to believe that the watches ‘AnnTaylor’ are
connected to the cancellation applicant’s ‘AnnTaylor’ clothing. In essence, the
EUTM proprietor advertised its own products on the Facebook page of the
cancellation applicant, when the products moreover bear the same name.
– In this context, it is rather hard to believe that the letters sent to Club
Premiere where the EUTM proprietor is presented as ‘licensee and authorized
representative of Ann Taylor trade mark’ were written without any intentions
to make a connection to the cancellation applicant. The EUTM proprietor’s
argument that Club Premier made the assumption of connection between the
applicant and the watches supplied by the EUTM proprietor without any
action of the EUTM proprietor, is thus clearly untrue. The other explanation,
namely that the commercial director has no knowledge of legal language and
chose the wording of the letter by mistake, is rather unconvincing.
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
9
– The Cancellation Division emphasizes that it is not an isolated event on the
basis of which the conclusion on dishonest intention was made but the
combination of all those events. The unlikely explanations of the EUTM
proprietor may be true as regards one situation but for all the events explained
and demonstrated by the cancellation applicant as a set of unconnected
coincidences is extremely unlikely.
– The filing of other trade marks by the EUTM proprietor such as
‘Abercrombie & Fitch’ or ‘Mc Laren’ adds to the combination of events.
Moreover, those marks were filed before the filing of the contested mark.
Making the Office aware of the fact that the EUTM proprietor filed trade
mark applications also in other jurisdictions consisting of the name of well-
known brands, is a factor that has to be taken into account in the course of
the assessment of the evidence filed. There are unquestionably several reasons
why the EUTM proprietor may have filed these marks. It may, for example,
be an authorised licensee by the parties concerned. However, the EUTM
proprietor does not deny, on the one hand, having filed the trade marks
concerned, and has not, on the other hand, provided any type of explanation
that may justify the filing of these trade marks. It limited itself to stating that
those marks were not refused on the grounds of bad faith but on other
grounds. In this regard, the Boards of Appeal repeatedly stated that filing of
other trade marks under dubious circumstances or appearing as a
misappropriation of other trader’s goodwill is a strong indication of the
EUTM proprietor’s dishonest business intentions (25/02/2013,
R 2448/2010−4, AERMACCHI MILANO, § 22; 12/01/2016,
R 3135/2014−2, ALEXANDER WANG / ALEXANDER WANG, § 89-96).
– If the EUTM proprietor makes the effort of defending the contested mark
against an invalidity request based on bad faith, it would be logical for it to
explain the reasons for the events described and proven by the cancellation
applicant to have happened, as such explanations may indeed be a very
relevant element to dismiss any doubts the Cancellation Division may have
regarding its honest intentions. If the EUTM proprietor, however, prefers not
to provide such explanation, that is a factor that the Cancellation Division can
and should take into account in its assessment (12/01/2016, R 3135/2014-2,
ALEXANDER WANG / ALEXANDER WANG, § 94).
– In the context of the overall analysis undertaken above, having regard to the
evidence and circumstances of the case and taking into particular
consideration the commercial logic underlying the filing and the chronology of
events, the Cancellation Division considers that it is apparent that the filing of
the contested mark ‘ANN TAYLOR’ was made with the real purpose of
creating an association with the identical sign used by the cancellation
applicant and the deliberate intention to benefit from its attractive force
(08/05/2014, T-327/12, Simca, EU:T:2014:289, § 56). In other words, the
cancellation applicant successfully proved that the contested EUTM was filed
in bad faith. The application is totally successful and the European Union
trade mark should be declared invalid for all the contested goods.
– There is no need to assess the remaining grounds on which the application is
based.
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
10
– Since the application is totally successful without taking into account any of
the registered earlier rights that are under invalidity or revocation requests,
the Cancellation Division decided not to suspend the proceedings as requested
by the EUTM proprietor, because the possible outcomes of those invalidity or
revocation proceedings will have no effect on the outcome of the present
decision.
9 On 19 December 2016, the EUTM proprietor filed an appeal against the contested
decision, requesting that the decision be entirely set aside. The statement of
grounds of the appeal was received on 3 March 2017.
10 In its observations in reply received on 9 May 2017, the cancellation applicant
requests that the appeal be dismissed.
Submissions and arguments of the parties
11 The arguments raised in the statement of grounds may be summarised as follows:
The only and unique reason why the EUIPO has declared invalid the
contested mark is the alleged bad faith when filing the application. The
contested decision does not state anything about the alleged reputation of the
‘ANN TAYLOR’ mark. The EUTM proprietor understands, thus, that the
alleged reputation has not been sufficiently proven, as it has not been accepted
by the Office. The remaining grounds on which the invalidity action was
based, apart from bad faith, have not been assessed by the Office. The
cancellation applicant has not appealed the contested decision. Any
opportunity of the cancellation applicant for appealing the contested decision
as regards Articles 8(1)(b) and 8(4) EUTMR has expired. The Board shall not
assess any other ground apart from bad faith.
For the finding of the existence of bad faith, the relevant moment to take into
consideration is the time of filing of the application for registration.
The EUTM allegedly filed in bad faith must be identical or confusingly similar
to the sign to which the cancellation applicant refers. The EUTM proprietor
has proven that the mark ‘AT ANN TAYLOR’ (Ann is a common female name
and Taylor is a common surname) and the cancellation applicant’s marks are
not confusingly similar since they are registered in totally independent classes
and have been exploited in relation to products that are different enough to
exclude any likelihood of confusion. Reference is made to the case-law in this
regard (EUIPO decisions, judgments of the General Court) and the Similarity
Tool that must be followed by examiners. The rejection of a trade mark for
products that are not identical or similar to those covered by the earlier mark
is only possible when the earlier mark is reputed. However, the necessary
reputation has not been observed by the Cancellation Division neither proven
by the cancellation applicant. Since one of the mandatory requirements for the
finding of the likelihood of confusion between the marks is not fulfilled, the
first factor for the existence is bad faith on the part of the EUTM proprietor is
missing.
Since the goods – watches and clothing – are not similar, the second factor
mentioned by the Cancellation Division for finding bad faith, i.e. the EUTM
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
11
proprietor’s knowledge of the use of an identical or confusingly similar sign, is
not fulfilled.
None of the potential indicators of dishonest intentions on the part of the
EUTM proprietor exists in the present case.
There is no reputation to free-ride on. Moreover, if that would have been the
EUTM proprietor’s intention, it should have started exploiting its trade mark
in the UK, where all evidence of reputation refers to, and not in Greece.
There is no lack of intention to use the mark and the EUTM proprietor’s sole
objective is not preventing a third party from entering a market. It has been
proven that the EUTM proprietor is the rightful owner of the trade mark
‘ANN TAYLOR’ in Mexico since 2003. It falls into the normal commercial
strategy of a company to extend the protection already granted by a national
mark by registered it in different territories. The EUTM proprietor has
submitted evidence of registration, use and exploitation of its mark in Mexico,
Uruguay and the Dominican Republic. The EU is a logical step in the EUTM
proprietor’s commercial strategy. The EUTM proprietor never tried to
register its trade mark in Class 25 in the EU, never has entered in the
cancellation applicant’s scope of activity and never has started or promoted
actions in order to exclude the cancellation applicant from the EU market.
The scope of activity of each company is perfectly delineated (one is engaged
in the horological sector and the other in the clothing sector) and the EUTM
proprietor only has started actions against the cancellation applicant when it
has tried to register a trade mark usurping the EUTM proprietor’s scope of
activity but never for blocking the development of the cancellation applicant’s
business in its field of activity.
A direct or indirect relationship between the parties prior to the filing of the
EUTM never existed. It has been proven that just an attempt to approach the
cancellation applicant existed from the part of Mr. A. Holzer. However, a
meeting between the conflicting parties never took place. The only reference
in this regard is the statements of the cancellation applicant’s personnel and
the email of Mr. Suarez Venturo, who was not working in Santamarina when
the supposed approach took place and drafted an email more than ten years
after. Nobody knows the source from which Mr. Venturo got the idea of an
existing meeting with the purpose of requesting a license. There is no
evidence that could prove any commercial contact between the parties in
about twenty years and it is reminded that ‘ANN TAYLOR’ is a very common
person’s name.
The EUTM proprietor has provided explanations concerning the creation of
its mark, has never requested any economical compensation to the
cancellation applicant and is the owner of a valid registration since 2003 that
also deserve protection and legitimates the EUTM proprietor’s use and
registration of its mark to other parts of the world. Moreover, the cancellation
applicant’s mark does not enjoy more than a normal level of protection.
The EUTM proprietor’s Mexican registration has never been declared invalid
because of bad faith.
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
12
The alleged facts taken into account by the Cancellation Division for deducing
the EUTM proprietor’s dishonest intentions are acts committed by third
parties by their own will or cannot be undoubtedly attributed to the EUTM
proprietor.
The link posted on the cancellation applicant’s Facebook page cannot be
undoubtedly attributed to the EUTM proprietor as anybody could have done
that, including the cancellation applicant to build a proof hardly rebuttable as
it would request to prove a negative fact.
The alleged fact that the Mexican distributor of the EUTM proprietor’s
watches used in 2013 for the purpose of advertising watches, photographs
previously used by the cancellation applicant for its advertising campaign
which were digitally altered to contain the EUTM proprietor’s watches and
the alleged fact that two distributors of the EUTM proprietor’s products
assumed that the products were under license from the cancellation applicant
cannot be attributed to the EUTM proprietor directly or indirectly.
The EUTM proprietor explained that it was the owner of the mark when the
letters in question were sent and thus was entitled to identify itself as an
authorized representative of the mark ‘ANN TAYLOR’. No direct or indirect
mention to the cancellation applicant is contained in the said letters.
In relation to the fact that the EUTM proprietor also filed several other trade
mark applications for famous brands between 2003 and 2012, each case must
be examined independently.
The degree of legal protection enjoyed by both signs has not been analysed in
the contested decision. The extent of the reputation of the mark ‘ANN
TAYLOR’ when the EUTM proprietor filed the mark is a circumstance that
shall be taken into account. The relevance of the reputation (at least a certain
‘surviving reputation’) of the earlier mark is confirmed by the judgment of
08/05/2014, T-327/12, Simca, EU:T:2014:289, § 49 and 56. The EUTM
proprietor explained before the Cancellation Division that the prior mark
‘ANN TAYLOR’ does not enjoy reputation in the EU. The proof submitted by
the cancellation applicant mainly refers to the United States and the
cancellation applicant has tried to extend that reputation to the United
Kingdom just on the basis of cultural or commercial proximity of these two
territories. No evidence has been submitted in reference to any sale of clothing
under the ‘ANN TAYLOR’ mark in the EU at the relevant date; the GFK
survey submitted as Annex 21 of the EUTM proprietor’s first observations
taking into account the public in the UK where the cancellation applicant
claims to enjoy reputation, clearly evidences that this brand awareness is not
even average; there is no actual use of the mark in the UK according to the
Thomson Reuters report submitted by the EUTM proprietor as Annex 16. In
12/01/2016, R 3135/2014-2, ALEXANDER WANG / ALEXANDER WANG
to which the Cancellation Division refers by analogy, the prior mark
‘ALEXANDER WANG’ enjoyed reputation. The EUTM proprietor, when
filing the EU trade mark, already held a normal degree of protection of its
mark in other jurisdictions. The subsequent filing of the EUTM for the same
goods as those covered in Mexico simply falls within the normal strategy of
the EUTM proprietor (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 23;
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
13
01/02/2012, T-291/09, Pollo Tropical chicken on the grill, EU:T:2012:39,
§ 58).
12 The arguments raised in reply to the appeal may be summarised as follows:
– The grounds of invalidity pursued by the EUTM proprietor other than the
claim of bad faith are not only live in these proceedings but remain sub judice.
Given that the cancellation applicant was entirely successful in its application
for invalidity, there is nothing in the contested decision for the cancellation
applicant to appeal against. If the Board upholds the appeal, the case must be
remitted to the Cancellation Division in order for it to consider the remaining
grounds of appeal.
– Whilst the cancellation applicant does not dispute the general proposition that
the situation has to be examined by reference to the circumstances at the filing
date, subsequent events may shed light on the position at the filing date.
– The marks share a high degree of similarity. The fact that the goods in
question are not considered similar within the meaning of the ‘Canon’ criteria
in no way precludes a finding of bad faith, as confirmed by the Cancellation
Division. The cancellation applicant maintains that watches and clothing are
similar for the purpose of Article 8(1)(b) EUTMR.
– Equally irrelevant is the issue on this appeal of whether the cancellation
applicant’s mark has the necessary reputation under Article 8(5) EUTMR. The
Cancellation Division determined that the EUTM proprietor had acted in bad
faith without the need to consider the cancellation applicant’s reputation.
– The EUTM proprietor knew about the cancellation applicant’s use of the
‘ANN TAYLOR’ mark not only at the time of filing the EUTM, but also at the
time of filing its first Mexican trade mark for ‘ANN TAYLOR’ in 2003. It is
undisputed that in June 2003 the EUTM proprietor filed Mexican registration
No. 970 460 for ‘ANN TAYLOR’ in Class 14.
– The cancellation applicant established that the EUTM proprietor made an
unsuccessful attempt in or around the year 2000 to meet with the cancellation
applicant to explore the possibility of obtaining a worldwide trade mark
licence in order to manufacture and sell watches bearing the cancellation
applicant’s ‘ANN TAYLOR’ mark.
– The Cancellation Division was also right to reject the alternative and frankly
implausible explanation from the EUTM proprietor that Mr Holzer’s mother’s
name (Ms Ana Neumann de Holzer) was the inspiration behind its decision to
file the ‘ANN TAYLOR’ mark, not least when, as the Cancellation Division
noted, the two names are a long way from one another.
– Without prejudice to the foregoing, the EUTM proprietor’s argument on
commercial logic and trajectory is undermined by the fact that since filing the
mark in suit it has made negligible use if any of the ‘ANN TAYLOR’ mark on
or in relation to watches in the EU.
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
14
– While the EUTM proprietor has not applied to register ‘ANN TAYLOR’
marks in Class 25 in the EU, it has applied to register six ‘ANN TAYLOR’
marks in Class 25 in Mexico.
– Because watches and clothing are closely related, consumers and traders will
likely be confused into thinking that watches bearing a mark which is the same
as or nearly identical to a clothing brand will emanate from the same source.
This has been shown in the present action where, for example, Promologistics
and Club Premier believed that the watches they had acquired from the
EUTM proprietor were genuine ‘ANN TAYLOR’ products authorised by the
cancellation applicant
– The EUTM proprietor has in fact initiated a large number of proceedings
against ‘ANN TAYLOR’ filings owned by the cancellation applicant (in the
UK, EU, Brazil, Mexico, Venezuela and Colombia), none of which covers
watches (or retail services in connection with the sale of watches). Such
actions flatly contradict the EUTM proprietor’s claim that it ‘only has started
actions against [the cancellation applicant] when it has tried to register a
trademark usurping the scope of activity of [the EUTM proprietor], but never
for blocking the development of [the cancellation applicant’s] business in its
field of activity.’ Details of these proceedings are set out in full of the Witness
Statement of Ms Nadine Jacobson at Annex 2.
– The cancellation applicant has clearly established that, even though the
EUTM proprietor’s asserted attempts to meet with the cancellation applicant
in order to explore the possibility of obtaining a trade mark licence were
ultimately unsuccessful, the EUTM proprietor still knew about the
cancellation applicant and its ‘ANN TAYLOR’ mark both at the date of filing
the Mexican Registration and at the relevant date. The fact that the parties did
not enter into a commercial relationship is irrelevant.
– The EUTM proprietor avoids mentioning the fact that its Mexican trade mark
registration has in fact been held invalid by the Mexican Sala Especializada en
Materia de Propiedad Intectual (‘SEPI’) on 17 January 2017 and the EUTM
proprietor was notified of this decision on 25 January 2017. The EUTM
proprietor has subsequently appealed the decision, but as of the date of filing
the EUTM proprietor’s submissions (namely 3 March 2017), the EUTM
Proprietor was aware that the Mexican Registration had been held invalid.
– The EUTM proprietor goes so far as to suggest that the cancellation applicant
itself could have posted the link to its own Facebook page on the cancellation
applicant’s (globally accessible) ‘(ANN TAYLOR) LOFT’ Facebook page in
order to build evidence to submit in these proceedings. This is a very serious
and entirely unfounded accusation, which the cancellation applicant denies. It
is noteworthy that the EUTM proprietor does not itself deny posting the link,
but instead argues that the act cannot necessarily be attributed to it.
– The EUTM proprietor has actively misrepresented itself as licensee of the
cancellation applicant to its distributors.
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
15
– The EUTM proprietor’s Mexican distributor used the cancellation applicant’s
advertisements with the images digitally altered to display the EUTM
proprietor’s products.
– The EUTM proprietor’s attempts to argue that individual items of evidence
cannot be attributed to it, or cannot be proven to derive from it, are not
credible in light of the weight of evidence against it.
– The EUTM Proprietor does not attempt to explain why it chose to apply for
famous third party marks. Filing the trade marks of others under dubious
circumstances is a strong indication of bad faith.
– The cancellation applicant enjoyed extensive reputation and goodwill in and
to its ‘ANN TAYLOR’ at the relevant date both in the USA and the EU.
– The mark ‘ANN TAYLOR’ is highly distinctive per se and of the cancellation
applicant in particular. ‘ANN TAYLOR’ is not a mark used by third parties in
the field of clothing, fashion, watches, jewellery and accessories.
Reasons
13 All references made in this decision should be seen as references to the EUTMR
2017/1001 (OJ L 154, 16.6.2017, p. 1), codifying EUTMR 207/2009 as amended,
unless specifically stated otherwise in this decision.
14 The appeal complies with Articles 66, 67 and 68(1) EUTMR. It is, therefore,
admissible.
15 According to Article 59(1)(b) EUTMR, an EU trade mark shall be declared invalid
if the EUTM proprietor was acting in bad faith when he filed the application for
the trade mark.
16 The concept of ‘bad faith’ referred to in Article 59(1)(b) EUTMR is not defined,
delimited or even described in any way in EU legislation (26/02/2015, T-257/11,
COLOURBLIND, EU:T:2015:115, § 64). Nevertheless, the Court has given
several clarifications as to the way in which that concept should be understood.
17 In its judgment of 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 53,
the Court stated that, in order to determine whether the applicant is acting in bad
faith within the meaning of Article 59(1)(b) EUTMR, all the relevant factors
specific to the particular case have to be taken into consideration.
18 Thus, in the context of the overall assessment undertaken pursuant to Article 59(1)
(b) EUTMR, account may be taken inter alia of the origin of the sign at issue, its
use since its creation, the commercial logic underlying the filing of the application
for registration of that sign as an EU trade mark and the chronology of events
leading to that filing (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 21;
11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 30).
19 Any alleged bad faith on the part of the EUTM proprietor has to be demonstrated
by reference to the time when the application for registration of the EU trade mark
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
16
was filed, that is to say, 4 April 2011 in the present case (11/06/2009, C-529/07,
Lindt Goldhase, EU:C:2009:361, § 35, 41).
20 The Court made it clear that the trade mark applicant’s intention at the relevant
time is a subjective factor which has to be determined by reference to the objective
circumstances of the particular case (11/06/2009, C-529/07, Lindt Goldhase,
EU:C:2009:361, § 42).
21 It is up to the cancellation applicant to demonstrate the existence of bad faith and
not for the other party to demonstrate its good faith because, as mentioned, good
faith is presumed until evidence to the contrary is provided (21/03/2012,
T−227/09, FS, EU:T:2012:138, § 32).
22 The facts of the case show that the EUTM proprietor filed the mark ‘ANN
TAYLOR’ for watches, for the first time in Mexico in 2003 and then extended the
protection of the same mark to other territories and in particular to the EU. The
cancellation applicant, who owns various trade marks registrations for ‘ANN
TAYLOR’ worldwide, allegedly reputed for women’s apparel and fashion
accessories in the USA and internationally, claims that the contested EUTM was
filed in bad faith since the EUTM proprietor was aware of cancellation applicant’s
prior rights, the EUTM proprietor’s intention was to dishonestly take advantage of
its prior rights and the EUTM proprietor’s behaviour subsequent to the filing of
the EUTM sheds light on its dishonest intention at the time of filing.
23 First, as to the similarity of the marks and the goods they cover, it is important to
point out that, on the one hand, the contested mark is similar to the mark which
has been used since 1954 in, in particular, the United States, by the cancellation
applicant, and that, on the other hand, the goods covered by the contested mark
are closely related to the goods covered by that mark (16/05/2017, T-107/16, AIR
HOLE FACE MASKS YOU IDIOT (fig.), EU:T:2017:335, § 30).
24 Indeed, it is undisputed that the contested figurative mark ‘AT ANN TAYLOR’ is
similar to the signs ‘ANN TAYLOR’ or ‘ANNTAYLOR’ used by the cancellation
applicant, for the reasons explained in the contested decision that the Board
endorses.
25 Furthermore, the fact that the first name ‘Ann’ is common and that the surname
‘Taylor’ is also common, as argued by the EUTM proprietor, at least in
anglophone countries, does not imply that their combination is necessarily
common. Besides, the EUTM proprietor has not claimed that there exists other
‘ANN TAYLOR’ marks used by third parties on the market.
26 As to the goods, the contested mark claims ‘watches’ in Class 14 which are
products adjacent to the clothing industry. Even though these goods cannot be
regarded as similar on the basis of the ‘Canon’ criteria, as argued by the EUTM
proprietor, it is undisputable that there is a close correlation between them, all
being used to improve a person’s image as clearly motivated in the contested
decision to which reference is made.
27 This proximity becomes even closer in the eyes of relevant consumers when they
come from a well-known mark in the fashion industry, taking into account the
common practice of fashion designers to extend their lines to other products and,
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
17
inter alia, watches (see, by analogy, 12/01/2016, R 3135/2014-2, ALEXANDER
WANG / ALEXANDER WANG, cited in the contested decision).
28 The case at hand is an example of this phenomenon: the American brand ‘ANN
TAYLOR’ existing since 1954 expanded its products from clothing to footwear,
hats, jewellery, sunglasses, fragrances and watches.
29 In this regard, it is noted that the cancellation applicant owns trade mark
registrations for ‘ANN TAYLOR’ in nearly 90 countries, in Class 25 but also in
Classes 3, 9, 14, 18, 35 and 42.
30 Second, as to the knowledge of use of the cancellation applicant’s mark before the
filing date of the contested EUTM, it shall be noted that a presumption of
knowledge of use by a third party of an identical or similar sign for an identical or
similar product capable of being confused with the sign for which registration is
sought may arise, inter alia, from general knowledge in the economic sector
concerned of such use (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361,
§ 39).
31 As the EUTM proprietor argues, the Cancellation Division did not take into
account in the contested decision the alleged reputation of the cancellation
applicant’s mark.
32 Nevertheless, the Board notes that on the basis of the quite longstanding use of
the earlier sign ‘ANN TAYLOR’ for women’s apparel and fashion accessories
since 1954 in the USA, as demonstrated by Annex 1 filed by the cancellation
applicant, the general knowledge in the economic sector concerned and the close-
proximity of the fashion-watches sectors, it can already be considered that the
EUTM proprietor, a Mexican company, thus close to the US market, could not
ignore the existence of the cancellation applicant’s mark.
33 Furthermore, and in any event, and although challenged by the EUTM proprietor,
there is evidence in the file that the EUTM proprietor knew about the cancellation
applicant’s use of the mark for clothing, not only at the time of filing of the EUTM
but also already at the time of filing of the EUTM proprietor’s first Mexican ‘ANN
TAYLOR’ trade mark on which the EUTM proprietor relies to justify its
commercial strategy of expansion to the EU, as held in the contested decision.
34 This evidence consists of affidavits by lawyers affiliated to the cancellation
applicant and of an email sent by one of the EUTM proprietor’s lawyers
demonstrating that the EUTM proprietor had approached the cancellation
applicant for a worldwide license agreement.
35 The cancellation applicant filed several affidavits (Annexes 2, 4 , 26 and 27)
written by lawyers from firms representing the cancellation applicant in the USA
and Mexico who confirm that they met with lawyers representing the EUTM
proprietor or even with Mr Holzer (the CEO of the EUTM proprietor) and were
told that Mr Holzer had attempted, before filing the Mexican registration, to
contact the cancellation applicant in view of a possible licence or distribution
agreement for Ann Taylor watches in Mexico.
36 The cancellation applicant also produced an email from Mr Suarez Venturo (one
of the EUTM proprietor’s lawyers) to Ms Jacobson (one of the cancellation
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
18
applicant’s lawyers) dated 24 May 2013 in which Mr Suarez Venturo provides
details of the EUTM proprietor’s attempts, before 2003 (i.e. the filing date of the
Mexican registration) to contact the cancellation applicant in order to explore the
possibility of obtaining a worldwide licence agreement to use the ‘ANN TAYLOR’
mark for watches (Exhibit 2 of Annex 25).
37 The EUTM proprietor denies that any meeting took place between the parties. It
does not deny however the existence of meetings between the lawyers
representing the parties. Whether or not a meeting between the EUTM
proprietor’s CEO and a representative of the cancellation applicant took place or
not is in fact not conclusive. It is undisputed that no licence agreement was
concluded between the parties. Thus the EUTM proprietor was not bound by any
contractual relationship with the cancellation applicant. Nevertheless, the EUTM
proprietor statement that ‘It has been proven that just an attempt to approach the
cancellation applicant existed from the part of Mr. A. Holzer’ clearly proves that it
admits that it had knowledge of the existence of the cancellation applicant’s mark
used for clothing and that, at that time, it considered itself that an agreement was
required with the cancellation applicant to use the mark ‘ANN TAYLOR’ mark for
watches.
38 Furthermore, on 26 August 2008, nearly 3 years prior to the EUTM proprietor’s
application the cancellation applicant filed a cancellation action in Mexico against
the EUTM proprietor’s Mexican registration No 970 460 for ‘ANN TAYLOR’ in
Class 14 based on the cancellation applicant’s prior use of the ‘ANN TAYLOR’
mark for Class 14 goods in the United States. This shows that the EUTM
proprietor was obviously aware of the existence of the cancellation applicant’s use
of the mark ‘ANN TAYLOR’ at least in the USA.
39 Finally, the EUTM proprietor’s explanations as to the creation of its mark are not
convincing. Mr Holzer claims that he was inspired by his mother’s name (Ana
Neumann de Holzer). However, it is a long way from ‘Ana Neumann de Holzer’ to
‘Ann Taylor’, as held in the contested decision.
40 Therefore, the contested decision was right to conclude that the EUTM proprietor
knew about the cancellation applicant’s identical or nearly identical mark, used for
goods belonging to a neighbouring market, when filing for the contested mark and
also when filing for the Mexican mark in 2003.
41 Nevertheless, such knowledge on the part of the applicant for the mark is still not,
in itself, sufficient to establish the existence of bad faith on the part of that person.
It is also necessary to take into account the intention of the applicant at the time of
filing the application for registration. Although that intention is necessarily a
subjective matter, it must none the less be determined by reference to the objective
circumstances of the particular case (11/06/2009, C-529/07, Lindt Goldhase,
EU:C:2009:361, § 42).
42 Third, as to the EUTM proprietor’s intention at the time of filing the EUTMA, the
Board notes the following.
43 In the first place, it is recalled that the EUTM proprietor, which knew the
cancellation applicant’s ‘ANN TAYLOR’ mark as demonstrated above, wishes to
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
19
obtain a licence agreement from the cancellation applicant, which it did not obtain.
This is a first indication that the mark was not filed in good faith.
44 In addition, the EUTM proprietor’s subsequent behaviour also sheds light on its
intention at the filing date of the mark, as argued by the cancellation applicant. As
held in the contested decision, the combination of events which took place after
the filing of the mark further demonstrates that the EUTM proprietor’s intentions
when it filed the application for the contested mark were not honest (16/05/2017,
T 107/16, AIR HOLE FACE MASKS YOU IDIOT (fig.), EU:T:2017:335, § 41).
45 In this regard, the Board notes that the Office is allowed to take into account any
evidence intended to facilitate the analysis of the EUTM proprietor’s intentions
and, a fortiori, any evidence relating to the actual commercial use of the EUTM
(see, by analogy, 11/12/2014, T-480/12, MASTER, EU:T:2014:1062, § 88).
46 The cancellation applicant submitted that since the relevant date, the EUTM
proprietor has sought to associate its goods with those of the cancellation
applicant by posting a link to its own Facebook page on the cancellation
applicant’s (globally accessible) ‘(ANN TAYLOR) LOFT’ Facebook page with the
text ‘There’s definately [sic] no time to waste, so take a look at our new fan page
for AnnTaylor watches’. The cancellation applicant adduced example screenshots
proving such a post at Annex 17. The EUTM proprietor’s Facebook page presents
the EUTM proprietor as ‘the legitimate owner of the trademark registrations for
ANN TAYLOR (watches and jewellery) in Mexico, Switzerland, the European
Union’. As held in the contested decision, in essence, the EUTM proprietor
advertised its own products on the Facebook page of the cancellation applicant,
when the products moreover bear the same name.
47 The said EUTM proprietor’s Facebook page was also promoted by emails sent
from the account ‘anntaylorworl@gmail.com’, including to the cancellation
applicant’s lawyers, titled ‘Please see our Ann Taylor page’ and containing a link to
‘http:/www.anntaylor.com.mx’ (owned by Mr Holzer) and the EUTM proprietor’s
‘Ann Taylor watches’ Facebook page, as evidenced by the Witness Statement of
Nadine Jacobson (Annex 3 and exhibits 1-3).
48 In its statement of grounds, the EUTM proprietor does not deny the existence of
the post on the cancellation applicant’s Facebook page, but instead argues that it
cannot necessarily be attributed to itself and that even the cancellation applicant
might have created it. However, as held in the contested decision, it is hard to
imagine that the post which contains the EUTM proprietor’s name and the link to
the EUTM proprietor’s page could have been posted by someone else than the
EUTM proprietor. It is furthermore highly unlikely that the cancellation applicant
created it as the cancellation applicant would take a commercial risk to link its
Facebook page with another Facebook page selling products which it considers
are infringing its trade mark rights.
49 Further, the cancellation applicant also submitted (as Annex 37) a Witness
Statement of Mr Mario Tanus Herrera, Attorney-in-Fact for Club Premier
(Mexico’s leading traveller loyalty programme) which states that Promologistics, a
distributor of the EUTM proprietor, supplied Club Premier with ‘ANN TAYLOR’
watches which both Promologistics and Club Premier believed were genuine
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
20
‘ANN TAYLOR’ products that had been authorised by the cancellation applicant
(‘the owner of the “Ann Taylor” fashion brand (being Annco, Inc.’).
50 The EUTM proprietor sent two letters (in the name of the Proprietor’s
Commercial Director) to Promologistics, which in turn were passed on to Club
Premier, stating that the EUTM proprietor was the ‘licensee and authorised
representative’ of the ANN TAYLOR mark. Copies of those letters and
translations were submitted at Exhibit 1 to Annex 37.
51 The EUTM proprietor argues that it was the owner of the mark when the letters in
question were sent and thus was entitled to identify itself as an authorized
representative of the mark ‘ANN TAYLOR’. It emphasizes that no direct or
indirect mention to the cancellation applicant is contained in the said letters.
52 However, the expression ‘licensee and authorised representative’ clearly induced
that the authorization was given by a third party. The witness statement also shows
that the distributors were misled since they made a direct connection with the
cancellation applicant’s mark that they already knew.
53 Furthermore, the cancellation applicant also adduced evidence that the EUTM
proprietor’s Mexican distributor, TiempoMania, had used digitally altered copies of
the cancellation applicant’s advertisements (including those featuring well-known
actresses Katie Holmes and Kate Hudson) to promote the EUTM proprietor’s
products. In response to the EUTM proprietor’s denial of responsibility for its
distributor’s action, the cancellation applicant submitted a witness statement of Mr
Nadim Buchahim Munoz of TiempoMania (Annex 35). In his witness statement,
Mr Munoz confirms that TiempoMania has been selling the EUTM proprietor’s
‘ANN TAYLOR’ watches in Mexico since 2013, stating: ‘I am aware that ANN
TAYLOR is a famous US clothing brand and I was aware of this fact when
TiempoMania first acquired the watches from Holzer in around April 2013. Given
that ANN TAYLOR was a well-known brand, I assumed the watches were
licensed by the owner of the famous ANN TAYLOR clothing brand’.
54 As argued by the cancellation applicant, this witness statement further underlines
the fact that the EUTM proprietor has been misrepresenting itself as a licensee of
the cancellation applicant.
55 The EUTM proprietor’s argument that the alleged fact that two distributors of the
EUTM proprietor’s products assumed that the products were under license from
the cancellation applicant cannot be attributed to the EUTM proprietor directly or
indirectly is unfounded. The EUTM proprietor has not shown that it took the
precaution to distinguish itself from the cancellation applicant’s mark, which was
well-known by its distributors. Furthermore, it did not claim that he undertook any
action so that these advertisements, which contributed to an obvious association
with the cancellation applicant, were withdrawn.
56 Therefore, the evidence in the present case establishes that registration of the sign
at issue was deliberately sought in order to create an association with the
cancellation applicant.
57 Furthermore, the cancellation applicant also argued that the EUTM proprietor has
attempted to prevent the cancellation applicant from extending use of its own
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
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‘ANN TAYLOR’ brand to watches in the EU. It has shown that the EUTM
proprietor, through its lawyers, contacted the cancellation applicant’s licensee
(L’Amy America) outside the EU to object to any sub-licensing by the cancellation
applicant of its brand in the EU in relation to the sale of watches, as evidenced by
the Witness Statement of Nadine Jacobson (Annex 3).
58 Finally, in order to demonstrate that the EUTM proprietor’s conduct is part of a
broader pattern of bad faith behaviour, the cancellation applicant submitted
evidence proving that the EUTM proprietor has a history of applying, without
consent, for well-known third party marks, including ‘SKAGEN’, ‘MC LAREN’,
‘MIDO’ and ‘ABERCROMBIE & FITCH’, for jewellery and watches in Mexico
(each of which was filed before the contested EUTM was filed).
59 In its response, the EUTM proprietor does not attempt to justify why it chose to
apply for famous third party marks and only argues that each case must be
assessed on its own merits. Although this is true and although these trade marks
filings concern Mexico and not the EU, they are also indicators of the EUTM
proprietor’s trade marks filing strategy which departs from honest commercial
practices.
60 All these facts point to the conclusion that the EUTM proprietor departed from
acceptable principles of ethical behaviour when he sought to lay his hands on the
sign ‘ANN TAYLOR’ in a manner that any reasonably commercially-minded
person would consider falls short of standards of acceptable commercial behaviour
(28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 71).
61 Therefore, the Board confirms, for the above reasons and the ones given in the
contested decision, that it has been established that the EUTM proprietor was
acting in bad faith when it filed the contested EUTM application.
62 Consequently, it is not necessary to assess the other grounds on which the request
for a declaration of invalidity was based. However, for the sake of clarity, this is
for reasons of procedural economy and not because those grounds of invalidity are
no longer sub judice. In this regards, the EUTM proprietor’s allegation that ‘any
opportunity of the cancellation applicant for appealing the contested decision as
regards Articles 8(1)(b) and 8(4) EUTMR has expired’ is unfounded since the
Office has not taken any decision on those grounds yet.
63 In light of the above, the appeal is dismissed and the contested decision is
confirmed.
Costs
64 Since the EUTM proprietor is the losing party within the meaning of Article
109(1) EUTMR, it must bear the fees and costs pursuant to Article 109(7)
EUTMR. It follows that it must bear the cancellation applicant’s representation
costs in the appeal proceedings of the amount of EUR 550. As to the cancellation
proceedings, the fixation of costs made in the contested decision applies.
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
22
Order
On those grounds,
THE BOARD
hereby:
1. Dismisses the appeal;
2. Orders the EUTM proprietor to bear the cancellation applicant’s costs in
the appeal proceedings of EUR 550.
Signed
S. Stürmann
Signed
C. Negro
According to Article 6 of
Commission Regulation
(EC) No 216/96
Signed
S. Stürmann
Registrar:
Signed
H. Dijkema
08/11/2017, R 2371/2016-2, AT ANN TAYLOR (fig.) / ANN TAYLOR et al.
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