IP Insight: Bad Faith Trade Marks and “NEYMAR”
IP Insight is a series from Virtuoso Legal the Intellectual Property Specialists. This case concerns bad faith trade mark applications and footballing megastar Neymar Jr.
The General Court provided on 14 May 2019 its decision in the case Moreira v EUIPO in relation to the mark “NEYMAR.”
On 17 December 2012, Mr Carlos Moreira made an application to register as an EU word mark “NEYMAR” in class 25 for “clothing, footwear, headgear.” The application was not opposed, and the mark was successfully registered in April 2013.
In February 2016, the football player Neymar Da Silva Santos Júnior, known as “Neymar” filed an application for invalidity against the trade mark. Neymar claimed that the mark was registered in “bad faith” contrary to Article 52(1)(b) of Regulation No 207/2009.
In November, the Cancellation Division upheld Neymar’s application. Mr Moreira appealed and on 6 September, the Second Board of Appeal of EUIPO confirmed the Cancellation Division. Mr Moreira appealed again and the matter reached the General Court.
The General Court
Mr Moreira appealed arguing that: Neymar was not known in Europe at the time of the trade mark application, he did not intend to benefit illegally from Neymar’s renown by his registration of the word mark “NEYMAR”.
Was Neymar known in Europe?
The intervener, Neymar, adduced evidence showing that he is known at an international level under his first name.
Moreover, the intervener brought clear evidence from France, Spain and the UK showing that he was highly publicised since 2009.
Therefore, the EUIPO was right in assessing that Neymar was known in Europe at the time of the application for the trade mark.
Mr Moreira admitted that he was aware of Neymar’s existence although he stated that Neymar was not known in Europe.
The Court put to question Mr Moreira’s evidence as on the day he applied to register the mark “NEYMAR,” he made another application for the registration of the word mark “IKER CASILLAS”, who was the captain of Real Madrid and the Spanish World Cup winning team at the time.
By trying to register the name of another famous football player, the Court stated that Mr Moreira “possessed more than a little knowledge of the world of football.”
In the intervener’s evidence, the Court observed that there were newspaper articles linking Neymar to a possible European transfer.
Indeed, such rumours proved to be accurate as Neymar was eventually transferred to FC Barcelona in 2013.
Was Mr Moreira trying to take advantage of Neymar’s renown?
Mr Moreira stated that the Board of Appeal relied on speculations deciding that his intention was to take advantage of Neymar’s renown in order to obtain certain financial advantages.
By referring to the case of Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), the Court stated that “the intention of the applicant for registration at the relevant time is a subjective factor which must be determined by reference to the objective circumstances of the particular case.”
The Court emphasised on the fact that the Board of Appeal reached its decision by reference to Neymar’s evidence which showed that he already had global standing and due to the fact that Mr Moreira also tried to register the word mark “IKER CASILLAS”.
Trying to register trade marks in order to benefit out of other companies/people’s renown for your own benefit can lead to costly proceedings and to the invalidation of your mark. It is important always to look for legal advice and ensure that your mark is not at risk of invalidation for “bad faith”.