EU General Court shows red card to the holder of a EU trademark for the word NEYMAR, who filed in bad faith as he was aware, at the time of filing, of the renown enjoyed in Europe by football player Neymar and sought to benefit illegally from it: the court confirms that sufficient objective circumstances justified the finding that the NEYMAR trademark application was filed with dishonest intentions.
In December 2012 Mr. Moreira filed an application for registration as a trademark of the European Union of the word sign “NEYMAR” covering clothing, footwear and headgear. The European Intellectual Property Office (the EUIPO) granted registration in 2013.
In 2016 Mr. Neymar Da Silva Santos Junior, a Brazilian football player widely known by the name of Neymar, applied with the EUIPO for a declaration of invalidity of the mark, claiming that Mr. Moreira was acting in bad faith when he filed the application for registration of the contested mark, and had therefore infringed Article 52(1)(b) of EU Regulation 207/2009, which provides that an EU trademark must be declared invalid, on application or on the basis of a counterclaim in infringement proceedings, where the applicant for registration was acting in bad faith when he filed the application.
The EUIPO’s Cancellation Division declared the mark invalid, and its Board of Appeal (hereinafter the BoA) confirmed the decision.
Mr. Moreira appealed the decision of the BoA before the General Court of the European Union.
The applicant’s plea
Mr. Moreira pleaded essentially that the BoA was wrong to find that the applicant was acting in bad faith when he filed to register the contested mark. The plea was based essentially on two arguments: 1) the football player known as Neymar was not yet known in Europe when the application was filed in 2012; 2) there had been no intention on the part of the applicant to benefit illegally from the renown of Neymar the football player, and the BoA merely formulated presumptions to the effect.
The General Court’s judgement
The General Court of the European Union (hereinafter “the GC”) issued its judgement in Case T-795/17 on 14 May 2019, upholding the BoA’s decision.
The judgement relies on the case law of the Court of Justice of the European Union (the CJEU), which has established that in order to determine bad faith for the purposes of Article 52(1)(b), account must be taken of all the relevant factors specific to each case, including the intention of the applicant at the time when the application for registration is filed.
According to CJEU case law, the intention of the applicant at the time of the application is a subjective factor which must be determined by analysing the objective circumstances of the particular case. Thus, the concept of bad faith relates to a subjective motivation on the part of the applicant, namely a dishonest intention. It involves conduct which departs from accepted principles of ethical behaviour or honest commercial or business practices.
The GC found that the BoA had relied on objective factors, in essence a portfolio press articles both in print and on line submitted by the football player’s counsel, to determine that Mr. Da Silva Santos Junior, at the date of filing the contested trademark, was already internationally recognised as a very talented footballer under the name of “Neymar”, which is exactly the word that Mr. Moreira filed to register as a trademark.
The BoA also deduced from another objective element – the fact that the applicant had filed on the same day to register also the word mark IKER CASILLAS, the name of another well-known footballer – that Mr. Moreira possessed more than a little knowledge of the world of football.
In addition, the GC found that the BoA determined bad faith by assessing the relevant factors in the specific context of the case, and was indeed entitled to deduct from the particular circumstances that the real purpose of the commercial logic behind the application for the NEYMAR trademark was to free-ride on the footballer’s reputation and take advantage of it.