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
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.