CANCELLATION DIVISION



CANCELLATION No 13 765 C (INVALIDITY)



H. Taylor & Son (Brockley) Limited, 19 Premier Way, Abbey Park, Romsey Hampshire SO51 9DQ, United Kingdom (applicant), represented by Ipulse, 26 Mallinson Road, London SW11 1BP, United Kingdom (professional representative)


a g a i n s t


Audi AG, Auto – Union-Str.1, 85045 Ingolstadt, Germany.



On 08/07/2019, the Cancellation Division takes the following



DECISION


1. The application for a declaration of invalidity is partially upheld.


2. European Union trade mark No 12 109 112 is declared invalid for some of the contested goods, namely:


Class 14 Jewellery, Horological and chronometric instruments; Amulets [jewellery, jewelry (Am)]; Anchors [clock and watch making]; Bracelets [jewellery, jewelry (Am)]; Wristwatches; Cases for watches [presentation]; Atomic clocks; Brooches [jewellery, jewelry (Am)]; Master clocks; Charms [jewellery, jewelry (Am)]; Cloisonné jewellery [jewelry (Am)]; Ivory [jewellery, jewelry (Am)]; Badges of precious metal; Cases for clock- and watchmaking; Barrels [clock and watch making]; Movements for clocks and watches; Gold thread [jewellery, jewelry (Am)]; Necklaces [jewellery, jewelry (Am)]; Hat ornaments of precious metal; Ornaments of jet; Jewelry; Chains [jewellery, jewelry (Am)]; Clock cases; Chronographs [watches]; Chronometers; Chronometrical instruments; Chronoscopes; Cuff links; Medals; Lockets [jewellery, jewelry (Am)]; Wire of precious metal [jewellery, jewelry (Am)]; Earrings; Pearls [jewellery, jewelry (Am)]; Ornamental pins; Jewelry of yellow amber; Rings [jewellery, jewelry (Am)]; Paste jewellery; Shoe ornaments of precious metal; Tie clips; Tie pins; Pins [jewellery, jewelry (Am)]; Ornaments [jewellery, jewelry (Am)]; Sundials; Stopwatches; Clocks; Watches; Clocks and watches, electric; Watch springs; Watch glasses; Watch chains; Watch cases; Watch bands; Dials [clock and watch making]; Clockworks; Clock hands [clock and watch making]; Alarm clocks.

Class 18 Goods made of leather and imitation of leather not included in other classes; Trunks and travelling bags; Bags for climbers; Boxes of leather or leather board; Boxes of vulcanised fibre; Attaché cases; Briefcases; Garment bags for travel; Haversacks; Valises; Handbags; Hat boxes of leather; Net bags for shopping; Shopping bags; Wheeled shopping bags; Game bags [hunting accessories]; Cases, of leather or leatherboard; Suitcases; Pouches, of leather, for packaging; Music cases; Key cases; Purses; Chain mesh purses; Travelling trunks; Travelling bags; Backpacks; Bags for campers; Card cases [notecases]; Casings, of leather, for springs; School bags; Bandoliers; Bags for sports; Trunks [luggage]; Beach bags; Bags; Pocket wallets; Travelling sets [leatherware]; Vanity cases, not fitted; Tool bags of leather, empty.

Class 25 Clothing, footwear, headgear; Togas; Dress shields; Layettes [clothing]; Bathing trunks; Swimsuits; Shower caps; Bath robes; Bath sandals; Beach shoes; Bath slippers; Belts [clothing]; Garters; Bandanas [neckerchiefs]; Berets; Paper clothing; Clothing; Trousers; Leg warmers; Fittings of metal for footwear; Miters [hats]; Babies' pants [clothing]; Boas [necklets]; Brassieres; Wimples; Pants; Gaiter straps; Teddies [undergarments]; Combinations [clothing]; Cyclists' clothing; Esparto shoes or sandals; Lace boots; Fishing vests; Detachable collars; Football boots; Footmuffs, not electrically heated; Footwear; Ready-made linings [parts of clothing]; Aprons [clothing]; Coats; Pelisses; Gabardines [clothing]; Galoshes; Spats; Gymnastic shoes; Clothing for gymnastics; Bibs, not of paper; Scarfs; Gloves [clothing]; Hats; Bathing caps; Hoods [clothing]; Girdles; Top hats; Headgear for wear; Caps [headwear]; Inner soles; Jackets [clothing]; Jerseys [clothing]; Skull caps; Masquerade costumes; Cap peaks; Smocks; Bodices [lingerie]; Dresses; Breeches for wear; Studs for football boots; Ready-made clothing; Corselets; Corsets [underclothing]; Short-sleeve shirts; Shoulder wraps; Clothing of imitations of leather; Clothing of leather; Leggings [trousers]; Liveries; Cuffs; Maniples; Mantillas; Stuff jackets [clothing]; Chasubles; Motorists' clothing; Mittens; Muffs [clothing]; Skirts; Ear muffs [clothing]; Topcoats; Headbands [clothing]; Paper hats [clothing]; Parkas; Pelerines; Fur stoles; Furs [clothing]; Money belts [clothing]; Ponchos; Pullovers; Pyjamas; Pocket squares; Welts for footwear; Sandals; Saris; Sarongs; Suspenders; Shawls; Ski gloves; Ski boots; Shirt fronts; Shirts; Shoes; Petticoats; Skorts; Shirt yokes; Dressing gowns; Neckties; Ascots; Veils [clothing]; Sock suspenders; Socks; Visors [headwear]; Sleep masks; Suits; Jumper dresses; Sports shoes; Boots for sports; Singlets; Tips for footwear; Boots; Half-boots; Beach clothes; Knitwear [clothing]; Heelpieces for stockings; Stocking suspenders; Stockings; Sweat-absorbent stockings; Anti-sweat underwear; Sweaters; Tee-shirts; Slippers; Sashes for wear; Wooden shoes; Hosiery; Tights; Turbans; Underpants; Slips [undergarments]; Underwear; Camisoles; Uniforms; Wet suits for water-skiing; Waterproof clothing; Vests; Outerclothing.


3. The European Union trade mark remains registered for all the remaining goods, namely:


Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; precious stones; Precious stones; Precious metals, unwrought or semi-wrought; Agates; Boxes of precious metal; Ingots of precious metals; Busts of precious metal; Diamonds; Gold, unwrought or beaten; Semi-precious stones; Iridium; Jet, unwrought or semi-wrought; Copper tokens; Works of art of precious metal; Alloys of precious metal; Coins; Key rings [trinkets or fobs]; Olivine [gems]; Osmium; Palladium; Pendulums [clock and watch making]; Pearls made of ambroid [pressed amber]; Beads for making jewelry; Platinum [metal]; Rhodium; Ruthenium; Jewelry cases [caskets]; Silver, unwrought or beaten; Silver thread; Spinel [precious stones]; Statues of precious metal; Statuettes of precious metal; Spun silver [silver wire].

Class 18 Leather and imitations of leather; Animal skins, hides; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Alpenstocks; Pouch baby carriers; Sling bags for carrying infants; Slings for carrying infants; Bits for animals [harness]; Leather straps; Kid; Clothing for pets; Leather leads; Girths of leather; Halters; Goldbeaters' skin; Chin straps, of leather; Collars for animals; Horse blankets; Horseshoes; Bridles [harness]; Curried skins; Imitation leather; Walking stick seats; Knee-pads for horses; Cattle skins; Suitcase handles; Leather, unworked or semi-worked; Leather trimmings for furniture; Moleskin [imitation of leather]; Leatherboard; Leather twist; Furniture coverings of leather; Leather laces; Nose bags [feed bags]; Muzzles; Frames for umbrellas or parasols; Umbrellas; Umbrella handles; Umbrella covers; Umbrella rings; Umbrella sticks; Parasols; Fur; Whips; Cat o' nine tails; Straps of leather [saddlery]; Straps for skates; Straps for soldiers' equipment; Riding saddles; Butts [parts of hides]; Saddle trees; Covers for horse-saddles; Saddlery; Fastenings for saddles; Harness for animals; Harness fittings; Harness straps; Traces [harness]; Pelts; Blinders [harness]; Walking sticks; Horse collars; Handbag frames; Stirrups; Parts of rubber for stirrups; Stirrup leathers; Umbrella or parasol ribs; Walking cane handles; Coverings of skins [furs]; Gut for making sausages; Reins; Bridoons; Pads for horse saddles; Chamois leather, other than for cleaning purposes; Valves of leather.

Class 25 Collar protectors; Heels; Heelpieces for footwear; Hat frames [skeletons]; Pockets for clothing; Footwear uppers; Soles for footwear; Non-slipping devices for footwear; Boot uppers;

4. Each party bears its own costs.


REASONS


The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 109 112 RS (word mark), namely the goods listed below.


Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments; Precious stones; Precious metals, unwrought or semi-wrought; Agates; Amulets [jewellery, jewelry (Am)]; Anchors [clock and watch making]; Bracelets [jewellery, jewelry (Am)]; Wristwatches; Boxes of precious metal; Cases for watches [presentation]; Atomic clocks; Ingots of precious metals; Brooches [jewellery, jewelry (Am)]; Busts of precious metal; Master clocks; Charms [jewellery, jewelry (Am)]; Cloisonné jewellery [jewelry (Am)]; Diamonds; Ivory [jewellery, jewelry (Am)]; Badges of precious metal; Cases for clock- and watchmaking; Barrels [clock and watch making]; Movements for clocks and watches; Gold, unwrought or beaten; Gold thread [jewellery, jewelry (Am)]; Necklaces [jewellery, jewelry (Am)]; Semi-precious stones; Hat ornaments of precious metal; Iridium; Jet, unwrought or semi-wrought; Ornaments of jet; Jewelry; Chains [jewellery, jewelry (Am)]; Clock cases; Copper tokens; Chronographs [watches]; Chronometers; Chronometrical instruments; Chronoscopes; Works of art of precious metal; Alloys of precious metal; Cuff links; Medals; Lockets [jewellery, jewelry (Am)]; Wire of precious metal [jewellery, jewelry (Am)]; Coins; Key rings [trinkets or fobs]; Olivine [gems]; Earrings; Osmium; Palladium; Pendulums [clock and watch making]; Pearls made of ambroid [pressed amber]; Pearls [jewellery, jewelry (Am)]; Beads for making jewelry; Platinum [metal]; Ornamental pins; Jewelry of yellow amber; Rhodium; Rings [jewellery, jewelry (Am)]; Ruthenium; Paste jewellery; Shoe ornaments of precious metal; Tie clips; Tie pins; Pins [jewellery, jewelry (Am)]; Ornaments [jewellery, jewelry (Am)]; Jewelry cases [caskets]; Sundials; Silver, unwrought or beaten; Silver thread; Spinel [precious stones]; Statues of precious metal; Statuettes of precious metal; Stopwatches; Spun silver [silver wire]; Clocks; Watches; Clocks and watches, electric; Watch springs; Watch glasses; Watch chains; Watch cases; Watch bands; Dials [clock and watch making]; Clockworks; Clock hands [clock and watch making]; Alarm clocks.

Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Alpenstocks; Bags for climbers; Boxes of leather or leather board; Boxes of vulcanised fibre; Attaché cases; Pouch baby carriers; Sling bags for carrying infants; Slings for carrying infants; Bits for animals [harness]; Leather straps; Kid; Clothing for pets; Briefcases; Garment bags for travel; Leather leads; Haversacks; Girths of leather; Halters; Goldbeaters' skin; Chin straps, of leather; Collars for animals; Valises; Handbags; Hat boxes of leather; Horse blankets; Horseshoes; Bridles [harness]; Curried skins; Imitation leather; Net bags for shopping; Shopping bags; Wheeled shopping bags; Walking stick seats; Game bags [hunting accessories]; Cases, of leather or leatherboard; Knee-pads for horses; Cattle skins; Suitcases; Suitcase handles; Leather, unworked or semi-worked; Leather trimmings for furniture; Moleskin [imitation of leather]; Leatherboard; Leather twist; Furniture coverings of leather; Pouches, of leather, for packaging; Leather laces; Nose bags [feed bags]; Muzzles; Music cases; Key cases; Frames for umbrellas or parasols; Umbrellas; Umbrella handles; Umbrella covers; Umbrella rings; Umbrella sticks; Parasols; Fur; Whips; Cat o' nine tails; Purses; Chain mesh purses; Travelling trunks; Travelling bags; Straps of leather [saddlery]; Straps for skates; Straps for soldiers' equipment; Riding saddles; Backpacks; Bags for campers; Butts [parts of hides]; Saddle trees; Covers for horse-saddles; Saddlery; Fastenings for saddles; Card cases [notecases]; Harness for animals; Harness fittings; Harness straps; Traces [harness]; Casings, of leather, for springs; Pelts; School bags; Bandoliers; Blinders [harness]; Walking sticks; Bags for sports; Horse collars; Handbag frames; Stirrups; Parts of rubber for stirrups; Stirrup leathers; Umbrella or parasol ribs; Walking cane handles; Trunks [luggage]; Beach bags; Coverings of skins [furs]; Gut for making sausages; Bags; Pocket wallets; Travelling sets [leatherware]; Vanity cases, not fitted; Reins; Bridoons; Pads for horse saddles; Tool bags of leather, empty; Chamois leather, other than for cleaning purposes; Valves of leather.

Class 25 Clothing, footwear, headgear; Togas; Dress shields; Layettes [clothing]; Bathing trunks; Swimsuits; Shower caps; Bath robes; Bath sandals; Beach shoes; Bath slippers; Belts [clothing]; Garters; Bandanas [neckerchiefs]; Berets; Paper clothing; Clothing; Trousers; Leg warmers; Fittings of metal for footwear; Miters [hats]; Babies' pants [clothing]; Boas [necklets]; Brassieres; Wimples; Pants; Gaiter straps; Teddies [undergarments]; Combinations [clothing]; Cyclists' clothing; Esparto shoes or sandals; Lace boots; Fishing vests; Detachable collars; Collar protectors; Football boots; Footmuffs, not electrically heated; Footwear; Ready-made linings [parts of clothing]; Aprons [clothing]; Coats; Pelisses; Gabardines [clothing]; Galoshes; Spats; Gymnastic shoes; Clothing for gymnastics; Bibs, not of paper; Heels; Heelpieces for footwear; Scarfs; Gloves [clothing]; Hats; Hat frames [skeletons]; Bathing caps; Hoods [clothing]; Girdles; Top hats; Headgear for wear; Caps [headwear]; Inner soles; Jackets [clothing]; Jerseys [clothing]; Skull caps; Masquerade costumes; Cap peaks; Smocks; Bodices [lingerie]; Dresses; Breeches for wear; Studs for football boots; Ready-made clothing; Corselets; Corsets [underclothing]; Short-sleeve shirts; Shoulder wraps; Clothing of imitations of leather; Clothing of leather; Leggings [trousers]; Liveries; Pockets for clothing; Cuffs; Maniples; Mantillas; Stuff jackets [clothing]; Chasubles; Motorists' clothing; Mittens; Muffs [clothing]; Skirts; Ear muffs [clothing]; Topcoats; Footwear uppers; Headbands [clothing]; Paper hats [clothing]; Parkas; Pelerines; Fur stoles; Furs [clothing]; Money belts [clothing]; Ponchos; Pullovers; Pyjamas; Pocket squares; Welts for footwear; Soles for footwear; Sandals; Saris; Sarongs; Suspenders; Shawls; Ski gloves; Ski boots; Shirt fronts; Shirts; Shoes; Petticoats; Skorts; Non-slipping devices for footwear; Shirt yokes; Dressing gowns; Neckties; Ascots; Veils [clothing]; Sock suspenders; Socks; Visors [headwear]; Sleep masks; Suits; Jumper dresses; Sports shoes; Boots for sports; Singlets; Tips for footwear; Boots; Boot uppers; Half-boots; Beach clothes; Knitwear [clothing]; Heelpieces for stockings; Stocking suspenders; Stockings; Sweat-absorbent stockings; Anti-sweat underwear; Sweaters; Tee-shirts; Slippers; Sashes for wear; Wooden shoes; Hosiery; Tights; Turbans; Underpants; Slips [undergarments]; Underwear; Camisoles; Uniforms; Wet suits for water-skiing; Waterproof clothing; Vests; Outerclothing.


The applicant invoked in the notice of invalidity the following rights:

  • EUTM No 4 749 743 for goods in Class 12, expired since 2015 (Articles 8(1)(b) and 8(5) EUTMR);

  • UK trade mark registration No 2 407 276 RS (word mark) for goods in Class 12, of which status appears to be “removed” (Articles 8(1)(b) and 8(5) EUTMR);

  • RS (word) trade mark well known in all the EU Member States (Article 60(1)(a) EUTMR);

  • Non registered trade marks RS (word) used in the course of trade in the EU and each of its Member States as such (Article 60(1)(c) EUTMR);

  • An industrial property right RS (the applicant did not specify the kind of the respective invoked right) claimed to be protected in the EU and the UK respectively (Article 60(2)(d) EUTMR).


Later on, in its submissions of 20/01/2017, the applicant further clarified that under Article 60(1)(a) EUTMR the earlier EUTM and UK trade mark registrations are well known. Additionally, it claimed Article 60(2)(a) EUTMR - right to the name ‘RS’ and the EUTM proprietor’s bad faith when filing for the EUTM (pursuant to Article 59(1)(b) EUTMR).


On 27/09/2016, the Office raised some deficiencies regarding the applicant’s invalidity notice. In main it was requested to indicate the goods/services and/or commercial activities on which the application for invalidity is based as regards the well-known trade mark RS and the non-registered trade marks RS.


In its response to the deficiencies letter the applicant mentioned the goods “for which the applicant has earlier rights and commercial activities and on which the application for invalidity are based” to be goods in Classes 14, 18 and 25 as well as that “rights are claimed in similar goods to the above”.


In its observations of 20/01/2017 the applicant specified that “the earlier mark is well known” and referred again to the earlier UK and EUTM trade mark registrations specified above.



SUMMARY OF THE PARTIES’ ARGUMENTS AND EVIDENCE


The applicant argues that: the RS trade mark is entitled to protection for goods in Classes 14, 18 and 25 (and others) under the law of Passing Off in the UK, and equivalent laws in other European countries. The applicant has an extensive and longstanding reputation in the RS trade mark for the goods and has had since the early 1970s. Audi (the EUTM proprietor) has admitted in its opposition to EUTM 13 769 864 that the goods of the contested EUTM are identical or similar to those of the applicant and Audi’s observations in that opposition are incorporated into this application and should be copied to this file.


On 20/01/2017, it filed clarifications as regards the scope of the invalidity action and evidence in support of its claims which consists of affidavits and attached exhibits to the respective statements as follows:

  • Statement of Martin Wadhams, (CEO of the applicant) and a large amount of documents not properly indexed and the content of which was not sufficiently identified. After a thorough analysis of such documents the Cancellation Division notes that they include supplier invoices from 2007, 2008 and 2009, invoices from 2009 issued for Belgium, France, Germany, Norway, Spain, brochures dated in 2014 and 2015, images of different RS goods (clothing, bags, boats), articles or news clips referring mostly to RS boats but also to some articles used in sailing as depicted in the images below and bearing the sign RS in a rather figurative form: