Registering an EU trade mark in bad faith: lessons from the “NEYMAR” decision
On 17 December 2012, Carlos Moreira, a Portuguese businessman, applied for the mark "NEYMAR" to be registered as an EU trade mark in class 25, covering clothing, footwear and headgear. Interestingly, on the same day Carlos Moreira also applied to register the name of Spanish goalkeeper and captain "IKER CASILLAS".
The application was not opposed and was subsequently registered as EUTM no. 011432044 on 12 April 2013, with Carlos Moreira as the registered owner and only person able to exploit the "NEYMAR" brand throughout the EU.
This blog examines what action Neymar’s team took after he transferred from Santos FC in Brazil to Barcelona FC in May 2013.
What happened after registration of the trade mark?
On 11 February 2016, Neymar applied for a declaration that Mr Moreira’s EU trade mark had been invalidly registered on the grounds of bad faith. Although the EU Trade Mark Regulation does not contain a definition of bad faith, the EU Intellectual Property Office (EUIPO) guidelines consider bad faith includes “dishonesty which would fall short of the standards of acceptable commercial behaviour” (see here1).
Both the EUIPO’s Cancellation Division and Second Board of Appeal agreed with Neymar upholding the invalidation action, in both Cancellation Decision 000012514 and Appeal R0080/2017-2 respectively. However, this did not dissuade Mr Moreira from appealing again to the EU General Court.
he did not know Neymar was a rising star in international football at the time of making the trade mark application (i.e. 17 December 2012); and
he did not intend to exploit Neymar’s fame and benefit from it.
What did the EU General Court decide?
The EU General Court stressed that bad faith must relate to the subjective intention of the applicant at the time of making the trade mark application (i.e. Mr Moreira’s intention, when registering the mark on 17 December 2012).
It was held that Neymar had successfully proved through various website and press excerpts that despite playing club football in Brazil at the time, he was already known (under his first name (Neymar)) in Europe on 17 December 2012, in particular due to his performances for the Brazilian national football team that were highly publicised, especially in France, Spain and the UK. In addition, the existence of Mr Moreira’s parallel EUTM application for "IKER CASILLAS" demonstrated that he possessed “more than a little knowledge of the world of football” (paragraph 34) and that he would therefore have known that Neymar was an internationally recognised professional footballer on 17 December 2012.
Carlos Moreira sought to show that it was a mere coincidence that he had filed the NEYMAR application and claimed that, amongst other things, he had chosen to register the name "Neymar" purely due to the phonetics of the name and that the name "Neymar" had not previously been registered as a trade mark.
On the basis of the evidence before it, the EU General Court rejected Mr Moreira’s arguments upholding that the application was
“filed deliberately with the purpose of creating an association with [Neymar’s] name in order to benefit from its attractive force”. (paragraph 55).
Thus, the "NEYMAR" registration was declared invalid due to bad faith, meaning not only that the EU registration has been cancelled under Article 59 (1)(b) of the EU Trade Mark Regulation, but also that the International trade mark registration (no. 1237405) upon which it is based will also be cancelled (under the so-called “Central Attack” doctrine, prescribed under Article 6(3) and 6(4) of the Madrid Protocol), affecting a range of other territories including (amongst others) the US, China, Japan, Russia and India. Furthermore, a number of other "Neymar" EUTM registrations that Mr Moreira has previously registered have met a similar fate and are now cancelled, including:
(EUTM no. 013002894)
(EUTM no. 013334503)
None were expressly mentioned in the decision, although they certainly add weight to the allegation of bad faith.
The case further illustrates the importance and value of (promptly!) registering the names of international athletes and sports personalities as trade marks. Prompt registration by Neymar would have avoided the lengthy, expensive and time-consuming dispute with Carlos Moreira. It was apparent from this case that Carlos Moreira may (at the time) have been more aware of the (potential) value in the NEYMAR name than Neymar and his own advisers were, with the first (genuine) EUTM registration (no. 014343545) for NEYMAR JR only being applied for in July 2015 (two years after his transfer to Barcelona).
It is worth noting that the validity of the "IKER CASILLAS mark" (EUTM no. 011431996) could also be challenged on the basis of bad faith in the future, as a result of this judgment regarding the NEYMAR mark.
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- Tags: EU Trade Mark Directive | European Union (EU) | Football | Intellectual Property | Portugal | Spain | Trade Mark
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Partner, Penningtons Manches CooperGavin is a trade mark, designs and brand protection specialist, advising brand owners in a wide range of industry sectors including fashion, retail, sport, drinks, education, publishing, IT, biotech and professional services.
Associate, Penningtons Manches Cooper
Jaya is an associate in the IP, IT and commercial team in Reading. Her expertise covers a range of commercial agreements, intellectual property licences and IT contracts, including terms and conditions of business, software licences and contracts for the supply of goods and services.
With a particular interest in data protection matters, she advises clients on the legal basis for processing and implementing GDPR-compliant agreements, policies and procedures. She is a member of the firm’s sports, fashion and life sciences sector groups and also plays an active role in the CSR committee in Reading.