Goal for another football star – Neymar wins before the General Court

In its judgment of 14 May 2019, the General Court (“EGC”) confirmed the ruling of the European Union Intellectual Property Office (EUIPO), which had declared the word mark “NEYMAR” invalid because its owner (not the football star Neymar) was acting in bad faith when he filed the corresponding application (Case T-795/17). This judgment can be appealed to the Court of Justice of the European Union (“CJEU”).

In December 2012, Mr. Carlos Moreira applied for the European Union Trade Mark (EUTM) “NEYMAR” covering “Clothing, footwear, headgear.” in class 25, which was registered in April 2013. In February 2016, Mr. Neymar Da Silva Santos Júnior (better known as Neymar, the Brazilian football star who was transferred to FC Barcelona in 2013) filed an application for a declaration of invalidity against the mark at issue in respect of all the protected goods. The EUIPO’s Cancellation Division upheld this application and the Second Board of Appeal endorsed this decision.

Now, the EGC rejected the action against the Second Board of Appeal’s decision filed by Mr. Moreira, who had argued that the Board was wrong to find that he was acting in bad faith when filing the application in question and who had asked the EGC to declare the mark valid.

To start with, the Court points out that the concept of bad faith is not defined, delimited or even described in any way in the legislation. However, it recalls that the CJEU provided some clarification regarding the interpretation of the concept of bad faith in its judgment of 11 June 2009 in Case C-529/17 [Chocoladefabriken Lindt & Sprüngli]. According to this, in order to determine whether the applicant for registration acted in bad faith, all the relevant factors of the specific case have to be considered, particularly (1) the fact that the applicant knows or must know that a third party is using an identical or similar sign, (2) the intention of the applicant to prevent that third party from continuing to use such a sign, and (3) the degree of legal protection enjoyed by both signs. Further, the origin of the contested sign and its use since its creation, the commercial logic underlying the filing, and the chronology of events leading up to that filing must also be taken into account.

In the applicant’s opinion, the Board of Appeal had been incorrect to rule that the applicant (1) knew that Neymar was a rising star in football and (2) had no motive other than to exploit Neymar’s renown to benefit from it.

With respect to claim (1), Mr. Moreira had stated that Neymar was not yet known in Europe at the time of filing the EUTM application. Nevertheless, in the proceedings before the EUIPO, Neymar had submitted evidence showing that he is a Brazilian football player internationally known under his first name and that he was already known in Europe at the relevant date, in particular for his performances for the Brazilian national football team. Already in the years from 2009 to 2012, he was highly publicised, especially in France, Spain and the United Kingdom, was recognised as a very promising football player and compared to the most renowned football players at that time. Moreover, many newspapers and news websites regularly mentioned Neymar’s likely future transfer to a top European club (FC Barcelona). Further, on the day Mr. Moreira applied for the mark at issue, he also filed an application for registration of the word mark “IKER CASILLAS”, a well-known Spanish goalkeeper. Thus, given that the word element “neymar” corresponds precisely to the name under which Neymar became known for his football career, it was shown that the applicant possessed more than a little knowledge of the world of football. Thus, the applicant’s claim (1) was dismissed.

Regarding claim (2), the applicant had denied having intended to benefit illegally from Neymar’s renown by filing the EUTM application at issue. The applicant had, among others, alleged that the use of the name “neymar” was a coincidence relating to the phonetic characteristics of the mark. This is not credible according to the EGC, considering that Neymar’s renown was already well established in the world of football (including in Europe) at the filing date and that the applicant possessed more than a little knowledge of that world. The applicant had also criticised that the Board of Appeal’s decision was based on mere speculations. However, given that the Board of Appeal had relied on objective factors from the evidence submitted, it had in the Court’s view correctly deducted that the real purpose of the commercial logic behind the applicant’s filing was to “free-ride” on and take advantage of Neymar’s reputation. Consequently, the EGC rejected claim (2) and the applicant’s action entirely.

After Lionel Messi succeeded before the EGC in an opposition against his EUTM application "MESSI" in April 2018 (Case T-554/14, appealed to the CJEU), this is the second victory for a football star defending his name in European Union trade mark proceedings within one year. Not only for football stars, the judgment of the EGC strengthening protection in cases of bad faith reflects a general trend to clamp down on trade mark squatting in the European Union.