Neymar scores at EU General Court: “Neymar” trade mark declared invalid due to bad faith registration

With an application filed in December 2012 Mr Carlos Moreira sought to register the word mark “Neymar” as an EU trade mark (EUTM) for goods in class 25 (clothing, footwear, headgear) of the Nice Classification. The EUTM was registered and published in 2013.

In February 2017, the intervener, Neymar Da Silva Santos Junior (currently with PSG and probably facing bigger headaches than IP-related ones), filed an application for a declaration of invalidity under Article 59(1)(b) of the EU Trade Mark Regulation (EUTMR), against this EUTM in respect of all the goods.

Neymar

The application for invalidity was upheld by the EUIPO Cancellation Division and confirmed by the EUIPO Second Board of Appeal. The matter was subsequently brought before the EU General Court, where Mr Carlos Moreira argued that Board’s decision should be annulled and that the EUTM should be declared valid. In particular, he submitted that the Board had incorrectly assessed:

(i) the applicant’s knowledge of the fact that the intervener was a rising star in football whose talent was recognised internationally at the relevant date of filing the EUTM, and

(ii) the applicant’s motive, i.e. to exploit the intervener’s renown in order to benefit from it.

The concept of bad faith

Article 59(1)(b) EUTMR provides that an EUTM must be declared invalid if the applicant acted in bad faith when filing their application (Chocoladefabriken Lindt & Sprüngli (C‑529/07). The concept of bad faith relates to a subjective motivation on the side of the trade mark applicant, namely a dishonest intention or other sinister motive (Copernicus-Trademarks v EUIPO — Maquet (LUCEO), T‑82/14).

(i) The General Court’s assessment of the applicant’s knowledge

The applicant had submitted that the intervener was not yet known in Europe when the contested mark was registered. The applicant was not likely to have known as early as 2012 that Neymar would be transferred to an important European football club. It was not until 2013 that Neymar started playing in Europe and became famous for his football skills.

Nonetheless, according to the EU General Court’s assessment and the evidence submitted by the intervener, Neymar was already highly publicized before 2012 because of his performance with the Brazilian national football team, especially in France, Spain and in the UK. Therefore, the applicant was wrong in asserting that ‘in the world of football’ the intervener was unknown in Europe at the relevant date.

Furthermore, the evidence filed by the intervener suggested that the applicant filed another trade mark application on the same day in relation to Casillas (one of the world’s best football goalkeepers at the time).

Taken together, the latter would suggest that the applicant could not have been unaware of the fact Neymar was already a professional footballer whose talent was recognised internationally at the time of the application.

(ii) Exploitation of the intervener’s renown

In this regard the applicant claimed that:

• the name ‘Neymar’ was chosen only and exclusively because of the phonetics of the word,
• he did not seek to obtain that registration so that it could be enforced against the intervener,
• any possible finding of bad faith on his part could have been established only if he had continued to pursue the procedure for registration despite the intervener’s opposition,
• at the relevant date, the name ‘Neymar’ was neither protected as a trade mark nor even used as such, and
• the Board of Appeal had put forward no document or evidence in support of its argument that the applicant’s intention was to take undue advantage of the intervener’s renown.

The court disagreed. Also, the fact that the contested mark consists of only the word element ‘Neymar’, which is identical to the name under which the intervener acquired international renown in the world of football, ruled out that all this would be merely a coincidence.

In this case, the applicant’s intention could be inferred from the fact that he was aware that the intervener was a very talented footballer who already had global standing in the world of football at the time of submitting the application for EUTM. Furthermore, this intention could also be deduced from another objective element — namely, the fact that the applicant had filed an application for registration of the word mark “Casillas” on the same day as the application for registration of the contested mark. The applicant was therefore wrong in claiming that the Board had simply asserted a fact without any supporting document or evidence.

Finally, a finding of bad faith by the applicant could not be overturned by claiming that (i) the applicant had not sought to have the contested mark registered so that it could be invoked against the intervener, (ii) any possible finding of bad faith might have been established only if he had continued to pursue the procedure for registration despite the intervener’s opposition, and (iii) the word element ‘Neymar’ was not protected as a trade mark at the relevant date.

As pointed out by the Board, bad faith is based on the applicant’s dishonest intention at the relevant date of filing the application for registration. The assessment itself as to whether that intent was dishonest follows from the fact that the application for registration was filed deliberately with the purpose of creating an association with the intervener’s name in order to benefit from its attractive force.