FUTGOLF | Decision 0012703

Date Published: Oct 1, 2017

CANCELLATION No 12 703 C (INVALIDITY)

World Footballgolf Association, c/o Bror-Erik Lundin, Salabacksgatan 64, 754 32 Uppsala, Sweden (applicant), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, The Netherlands (professional representative)

a g a i n s t

Olga García Delgado, Santa Elena 3, Aspe, Spain (EUTM proprietor), represented by IBIDEM Abogados Estrategas, S.L.P., Juan de la Cierva 43, Elche Parque Empresarial, Planta 2, local 1.1., 03203 Elche (Alicante), Spain (professional representative).

On 19/04/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is rejected in its entirety.

2.        The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 7 186 968 ‘FUTGOLF’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 25:        Clothing, footwear, headgear.

Class 28:        Games and playthings, sporting articles.

Class 41:        Sporting and cultural activities.

The applicant initially invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (d) EUTMR and subsequently limited the grounds to Article 7(1)(b) and (c) EUTMR. It also invoked Article 52(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that ‘Footballgolf’ is a sport. According to the applicant, ‘foot(ball)golf’ (the English equivalent to ‘FUTGOLF’) had been played in the EU, in particular in Sweden and Denmark, before the filing of the contested EUTM. The applicant refers to the creation of the World Footballgolf Association (WFGA) in 2007 in Sweden and of the International FootGolf Association in 2009 in Switzerland, renamed the Federation for International FootGolf (FIFG) in 2012. According to the applicant, footballgolf and footgolf are basically the same sport (the aim of which is to get a football into a hole in as few kicks as possible). The applicant further indicates that, in 2007, the first WFGA annual footballgolf championship was organised in Dirmstein (Germany) and, since 2009, numerous footgolf tournaments have been organised around the world. It submits press cuttings on the celebration of the tournament in Dirmstein (Exhibit 1). The applicant considers that ‘footballgolf’ and ‘footgolf’ are generic words and so are their translations into other EU languages, including ‘futgolf’ in Spanish, and as such the mark is invalid under Article 7(1)(b), (c) and (d) EUTMR. Moreover, it should be declared invalid under Article 52(1)(b) EUTMR, as the trade mark was filed when foot(ball)golf was already an established (and growing) sport.

In support of its observations, the applicant filed the following evidence:

  • Exhibit 1: data on the creation of the domain www.worldfootballgolf.com on 24/10/2007, from the WHOIS database.
  • Exhibit 2: various articles on footballgolf from German newspapers and websites:
  • ‘Much fun in spite of handicaps’ (31/05/2007);
  • ‘First world championship planned – Football-Golf: Starting shot at 18-holes course sounds at Easter’ - Dier Rheinpfalz, Frankenthaler Zeitung, (02/04/2007);
  • ‘The host may put on the crown’ – FussballGolf referring to the championship in Dirmstein (undated);
  • ‘Also FCK-pro’s join to hole out’ – Fussball-Golf: Today is the opening of the first world championship football-golf in Dirmstein (undated);
  • ‘Goal!’ –‚World Championship of Soccergolf’, referring to the World Championship in Dirmstein (undated);
  • ‘New fun sports footballgolf’ from golfsportmagazine.de (08/09/2007);
  • Article on the opening of the first footballgolf course in Dirmstein, Germany in 2006.
  • Article ‘Whole-in-one kick’ referring to the opening of the footballgolf in Dirmstein, Germany.

The EUTM proprietor makes the preliminary point that the Office should limit its examination of the facts to those within the scope of the applicant’s factual submissions. She argues that the applicant’s arguments and evidence are clearly insufficient to prove that the EUTM should be cancelled. She contests the value of the German press cuttings. Moreover, she contends that the applicant has not submitted any evidence of prior registered or non-registered trade mark rights to the word ‘FUTGOLF’ or ‘FOOTBALLGOLF’.

In addition, the EUTM proprietor puts forward more detailed arguments on why the trade mark ‘FUTGOLF’ is not descriptive under Article 7(1)(c) EUTMR or otherwise non-distinctive under Article 7(1)(b) EUTMR. She indicates that the Office has accepted similar trade marks in Class 28 and that, at the time of filing of the EUTM (2008), the trade mark was not descriptive. She also contends that the applicant has not provided evidence showing common usage under Article 7(1)(d) EUTMR of the invented word ‘FUTGOLF’ in relation to the goods and services at the time of filing of the EUTM. Finally, she also argues that she is the owner of Spanish trade mark No 3 505 730 ‘FUTGOLF’ (figurative mark), registered on 27/08/2014.

In its reply, the applicant further insists on the descriptive and non-distinctive nature of the word ‘FUTGOLF’ with respect to the relevant goods and services. The word ‘FUTGOLF’ is made up of two common Spanish and/or Portuguese words: it is clearly a contraction of the words ‘futbol’/‘futebal’ and ‘golf’/‘golfe’. It submits excerpts from online dictionaries (Annex 1). It contends that, in view of the popularity of football in Spain and Portugal, the element ‘FUT’ in ‘FUTGOLF’ will be immediately recognised as the word for ‘foot’ in ‘football’ by Spanish- and Portuguese-speaking consumers (Wikipedia extracts in Annex 2). There is nothing unusual in the combination. As a result, the word ‘FUTGOLF’ cannot indicate the commercial origin of the goods and services, which are associated with this sport. The applicant also submits evidence that there are other sports’ names that are formed of the combination of ‘fut’ and the name of another sport, such as volleyball or tennis, in Spanish and Portuguese (Annex 3) and that, in Portuguese and Spanish, as shown by Wikipedia, the element ‘fut’ in ‘futgolf’ is associated with ‘football’ (Annex 4). It further claims that the word ‘FUTGOLF’ is also descriptive in other EU Member States such as the UK, the Netherlands and Germany: due to the significant status of Portugal and Spain in this sport, the average consumer in other EU countries will associate ‘FUTGOLF’ with equivalent sports, such as footgolf, footballgolf, voetbalgolf and Fussballgolf (Google hits in Annex 5). The applicant rejects the EUTM proprietor’s arguments based on the previous registration of allegedly similar trade marks. It also notes that recent practice shows that ‘golf trade marks’ are refused, referring to the Boards of Appeal decision on ‘GOLFHUB’ (Annex 6). As a result, the applicant argues that the relevant public will consider that the trade mark ‘FUTGOLF’ constitutes an immediate, direct and easily understandable indication of a sport that combines the characteristics of football and golf. The relevant goods and services will be considered as related to this sport.

The applicant claims that there was bad faith on the part of the EUTM proprietor, arguing that, although the trade mark application was filed in 2008 and the trade mark was accepted in Alicante, Spain, at the end of 2009, it was not used in any form until the beginning of 2013 (when the website ‘futgolf.es’ went live). Moreover, it claims that, on 27/03/2012, the EUTM proprietor sent a letter to the company Makass & Makass SL requiring the company to cease violating the trade mark rights. Makass & Makass SL had started operating a footballgolf course in 2010. The EUTM proprietor’s letter indicates that she has successfully opposed the registration of the trade marks ‘Futbolgolf España’ and ‘Futbolgolf Catalunia’ (Annex 7). According to the applicant, this proves that foot(ball)golf was already an existing sport when the EUTM proprietor applied for the trade mark in 2008 and so the EUTM proprietor was aware or should have been aware of the existence of the sport. In this regard, it reiterates that there had already been a foot(ball)golf championship in 2007 and the WFGA website went live in October 2007, that is, before the filing of the contested trade mark (Annex 8). Finally, the applicant adduces evidence to show that footballgolf is a sport that has been played for several decades in the EU, notably in Sweden and Denmark (Annex 9). In conclusion, the applicant contends that the EUTM proprietor misused the system with the intention of preventing any similar sign from entering the market.

In support of its observations, the applicant filed the following evidence:

  • Annex 1: excerpts from online dictionaries, with translations into English, of the Spanish words ‘fútbol’ and ‘golf’ and the Portuguese words ‘futebol’ and ‘golfe’, (15/09/2016);
  • Annex 2: Wikipedia extracts on ‘Football in Spain’ and ‘Football in Portugal’ (15/09/2016);
  • Annex 3: Wikipedia extracts on ‘Futsal’, ‘Footvolley’ and ‘Futvóley’ (the final one in Spanish) (22/08/2016); Google hits for the word ‘futevolei’ (in Portuguese, 05/09/2016); Wikipedia extract on ‘Futbol Tennis’ (in Catalan, 05/09/2016); Google hits for the expressions ‘fut tennis’ and ‘fut tenis’ (05/09/2016);
  • Annex 4: Wikipedia extracts on ‘Futgolf’ (in Portuguese, 22/08/2016) and ‘Futgolf’ (in Spanish, 22/08/2016), with translations provided of the excerpts;
  • Annex 5: Google hits for ‘footgolf’ (in Dutch), ‘futegolf’ (in Portuguese), ‘fussgolf’ (in German), ‘voetgolf’ (in Dutch) and ‘futgolf’ (in Spanish) (22/08/2016);
  • Annex 6: the decision of 11/07/2012, R 222/2012-4, GOLFHUB, confirming the refusal of the trade mark ‘GOLFHUB’;
  • Annex 7: letter of 27/03/2012 from the EUTM proprietor to Makass & Makass;
  • Annex 8: printout from www.whois.com indicating the creation of the domain name worldfootballgolf.com on 24/10/2007;
  • Annex 9: extract from the website www.fotbollsgolf.se advertising a football golf course in Sweden and three press cuttings on football golf in Sweden (dated 2003-2004).

The EUTM proprietor reiterates the previously submitted arguments in her rejoinder.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Consideration common to all the grounds invoked in conjunction with Article 52(1)(a) EUTMR, namely Article 7(1)(b) and (c) EUTMR

The EUTM was applied for on 25/08/2008 and registered on 22/04/2009. It consists of the word mark ‘FUTGOLF’ in connection with the following goods and services:

Class 25:        Clothing, footwear, headgear.

Class 28:        Games and playthings, sporting articles.

Class 41:        Sporting and cultural activities.

Relevant public

The applicant argues that the relevant public is the general public in the EU. The applicant claims that the word ‘FUTGOLF’ is made up of two common Spanish or Portuguese words: ‘fut’ and ‘golf’ (in Spanish) or ‘fute’ and ‘golfe’ (in Portuguese). It further contends that the relevant public in other EU countries will identify ‘FUTGOLF’ as a reference to football and golf, in view of the significant status throughout the EU that Spain and Portugal have in this sport.

The EUTM proprietor does not contest the applicant’s definition of the relevant public. However, the EUTM proprietor contests the conclusion on the descriptiveness of the word ‘FUTGOLF’ and claims that this word does not have any meaning in Spanish, French, German or English.

The Cancellation Division considers it appropriate to assess whether or not the contested EUTM has been registered contrary to the provisions of Article 7 EUTMR with regard to the average consumer, in not only Spain and Portugal, but the whole of the European Union.

Relevant point in time

The relevant point in time in respect of which the assessment of the claimed descriptive character or lack of distinctiveness of the sign ‘FUTGOLF’ must be made is the date of application of the trade mark. In other words, it is necessary to establish whether or not the word ‘FUTGOLF’ was descriptive of the goods and services at the time of its filing (i.e. 25/08/2008).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested EUTM is registered (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 24).

In accordance with the same case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25). Moreover, to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of the sign designates a characteristic of the goods concerned (11/04/2008, C-344/07 P, Focus, EU:C:2008:222, § 21).

The existence of such a relationship must be assessed, firstly, in relation to the goods covered by the contested EUTM and, secondly, in relation to the perception of the relevant public (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30).

The parties’ arguments have been summarised in above.

The Cancellation Division considers that the applicant failed to prove that, at the time of filing (25/08/2008), taken as a whole, the mark ‘FUTGOLF’ immediately informed the relevant consumer in the European Union, without further reflection, that the goods and services for which the mark is registered related to a sport that combines the characteristics of football and golf.

First, the facts of the case show that the word ‘FUTGOLF’ is an invented word. It does not appear in Portuguese or Spanish dictionaries or in other EU language dictionaries. At most, it appears in Wikipedia articles printed many years after the filing of the EUTM (Annex 4). In addition, according to case-law, information taken from Wikipedia must be disregarded since, as it is based on an article from a collective encyclopaedia established on the internet, whose content may be amended at any time and in certain cases by any visitor, even anonymously, such alleged information lacks certainty (16/10/2014, T-444/12, Linex, EU:T:2014:886, § 47 and the case-law mentioned therein).

Moreover, it is not evident from the evidence submitted that the word ‘FUTGOLF’ would be immediately associated by the relevant consumer with a sport that combines football and golf. The evidence submitted by the applicant to show the link that the public would establish between ‘fut’ and ‘football’ (online dictionaries, Google hits, Wikipedia extracts) is all dated more than seven years after the filing of the EUTM. It is therefore not representative of the perception of the relevant public in August 2008.

Second, as noted by the EUTM proprietor, there is no evidence of the use of the word ‘FUTGOLF’ in connection with a sport combining the characteristics of football and golf before the filing date of the EUTM. The press cuttings refer to words in German or Swedish (Exhibit 2 and Annex 9).

Third, in connection with the above, although the applicant has shown that, before the filing date, certain initiatives were undertaken to launch a sport that combined football and golf in Germany and Sweden, the evidence refers to only very specific events, with no reference to ‘FUTGOLF’. In particular, the evidence consists of German press cuttings on a ‘fussballgolf’ or ‘fussball-golf’ tournament in a small municipality in Germany (Dirmstein, 3 000 inhabitants) in 2007, and press notes on the opening of ‘Fotbollsgolf’ courses in three villages in Sweden (Ystad, Ruda and Maglarp) in 2003 or 2004. Cleary, these events are not sufficient to show that the word ‘FUTGOLF’ was, in the mind of the average consumer of the EU, descriptive of a newly born sport in 2008.

For the sake of completeness, it should be noted that, even if facts post-dating the filing date may allow conclusions to be drawn on the descriptiveness of the sign, this is not so in the present case. The only information that explicitly refers to ‘FUTGOLF’ is in the Wikipedia extracts in Annex 4. Not only is the value of Wikipedia extracts questionable, as seen above, but also, more importantly, the Cancellation Division notes that such extracts explicitly refer to the fact that ‘FUTGOLF’ is a trade mark registered by Juan Manual Asensi and Olga García (Annex 4).

Finally, the Cancellation Division would like to emphasise that, in the present case (as opposed to in an assessment of revocation pursuant to Article 51(1)(b) EUTMR, where events occurring after the date of filing are taken into account), the relevant date to be taken into account is the date of filing of the contested mark, and the evidence is clearly not sufficient to support the fact that the mark in question was descriptive on the date stated.

In the light of the foregoing, the Cancellation Division considers that the trade mark ‘FUTGOLF’ did not convey obvious and direct information at the time of its filing regarding the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service in question, or other characteristics such as their subject matter.

It follows that the link between the word ‘FUTGOLF’ and the goods and services referred to in the application for registration is not sufficiently close in the European Union for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

Non-distinctiveness – Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered.

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29).

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26).

In this regard, the applicant has not provided evidence or convincing arguments that prove that the contested EUTM is devoid of distinctive character.

The applicant’s arguments that the EUTM lacks distinctiveness are based on the assumption that the contested sign, ‘FUTGOLF’, is descriptive. However, as is seen above, it cannot be concluded that the contested sign was descriptive at the time of its filing. Therefore, a lack of distinctiveness of the contested EUTM cannot be affirmed on account of its alleged descriptiveness. Furthermore, the applicant did not submit examples of use of the word ‘FUTGOLF’ as a non-distinctive expression at the time of filing of the EUTM.

In view of the above, the invalidity application must be rejected also on the ground for invalidity laid down in Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(b) EUTMR

General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Finally, it should be recalled that the EUTM system is based on the ‘first-to-file’ principle laid down in Article 8(2) EUTMR. The application of that principle is moderated, inter alia, by Article 52(1)(b) EUTMR, under which, following an application to EUIPO or on the basis of a counterclaim in infringement proceedings, an EUTM is to be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark. Therefore, where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the EUTM proprietor had been acting in bad faith when it filed the application for registration of that mark (14/02/2012, T-33/11, BIGAB, EU:T:2012:77 § 16-17; 21/03/2012, T-227/09, FS, EU:T:2012:138, § 31-32). As a general rule, good faith is presumed until the opposite is proven and the burden of proof in this respect lies exclusively with the invalidity applicant (13/12/2012, T-136/11, Pelikan EU:T:2012:689, § 57).

Summary of the relevant facts

As stipulated by Article 52(1)(b) EUTMR, the bad faith that is assessed is that of the applicant when he filed the application for the trade mark. Therefore, the relevant point in time is the filing date of the contested mark (25/08/2008).

The documents submitted by the applicant to support its claims are listed above.

In the present case, the applicant puts forward the following facts supporting its argument that the EUTM proprietor was acting in bad faith when she filed the EUTM:

  • the lack of use of the trade mark until the beginning of 2013 (when the website ‘futgolf.es’ went live);
  • the EUTM proprietor’s actions preventing other companies from using the word ‘futbolgolf’ (the letter of 2012, which referred to opposition actions before the Oficina Española de Patentes y Marcas in 2011);
  • foot(ball)golf was already a sport when the EUTM proprietor applied for the trade mark in 2008, meaning that the EUTM proprietor was aware or should have been aware of the existence of the sport.

The applicant admits that blocking the registration of other trade marks is not in itself an indication of bad faith. However, considering that the trade mark was not used until 2013, it considers that it is clear that the EUTM proprietor’s intention was to misuse the system to prevent any similar sign from entering the market.

The EUTM proprietor, however, indicates that:

  • it cannot be inferred from the evidence submitted that she acted in bad faith;
  • the applicant has not provided any evidence of prior registered or non-registered trade mark rights to the words ‘FUTGOLF’ or ‘FOOTBALLGOLF’;
  • she was not aware of the previous use of the word ‘FUTGOLF’. In fact, the applicant has not demonstrated use of the word ‘FUTGOLF’.

Assessment of bad faith

The applicant’s main line of reasoning is that the EUTM proprietor should have known that ‘foot(ball)golf’ was already a sport and that the EUTM proprietor’s intention when filing the EUTM was to misuse the system and prevent any similar sign from entering the market.

The Cancellation Division notes that the filing of a descriptive EUTM, while possibly indicating bad faith, is not in itself sufficient for a finding that at the time of filing the EUTM proprietor’s intentions were dishonest.

In the present case, in any event, the applicant has failed to prove that the word ‘FUTGOLF’ was descriptive at the time of filing of the EUTM in relation to the relevant goods and services. The alleged descriptiveness of the EUTM cannot therefore be taken as a factor pointing to the dishonest conduct of the EUTM proprietor.

Moreover, as a logical consequence of the above finding, the applicant has failed to demonstrate that the EUTM proprietor knew that the word ‘FUTGOLF’ was descriptive of a specific sport at the time of filing of the contested EUTM. The applicant has submitted evidence only on the creation of the domain name worldfootballgolf.com and the generic use of the word ‘foot(ball)golf’ in German and Swedish in very specific municipalities in Germany and Sweden. Although it is possible, in some specific cases, to assume that the EUTM proprietor had prior knowledge, this is not applicable in the present case. Not only is the evidence of generic use not of the contested sign but of other (allegedly) linguistic versions, but also the geographical scope of the use is very limited. As a result, the Cancellation Division cannot infer from this evidence that the EUTM proprietor was aware or should have been aware of the use of the word ‘footballgolf’ to designate a specific sport, especially not the word ‘FUTGOLF’.

In addition, the mere knowledge by the EUTM proprietor of other linguistic versions of the sign would not be sufficient to conclude bad faith. The applicant has to show some type of dishonest intention on the part of the EUTM proprietor at the time of filing of the mark. In this regard, the mere fact that the EUTM proprietor did not use the registered trade mark until 2013 but opposed the registration of similar trade marks in Spain in 2011 and sent a cease and desist letter in 2012 does not show any dishonest intention on the part of the EUTM proprietor when filing the trade mark. Rather, this evidence shows that the EUTM proprietor’s objective was legitimate, namely to protect her rights against similar marks.

In the light of the foregoing, the applicant’s claim based on Article 52(1)(b) EUTMR must be rejected.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) EUTMIR and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

José Antonio GARRIDO OTAOLA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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