The dispute’s background
On 17 December 2012, Mr. Carlos Moreira, residing in Portugal, filed an application for registration of the “NEYMAR” word sign as an EU trade mark. The goods for which registration was sought were clothing, footwear and headgear. The EU mark was successfully registered in April 2013.
On 11 February 2016, the famous Brazilian footballer Neymar Da Silva Santos Junior unsurprisingly filed an application for a declaration of invalidity against that mark. A few months later, EUIPO upheld this application on the grounds of bad faith.
Mr. Moreira contested the invalidation of his trademark and brought an action before the General Court of the EU, denying that he had been acting in good faith when he had filed the application for registration of the “NEYMAR” mark.
The concept of bad faith
EU legislation provides that an EU trademark must be declared invalid where the applicant for registration was acting in bad faith at the time that he filed the application. The legislation remains, however, largely silent regarding the scope and interpretation of the concept of “bad faith”.
Consideration must therefore be given to the relevant factors specific to the particular case, such as: the origin of the sign and its use following its registration, the commercial logic underlying the filing of the application, the chronology of the events leading up to that filing or the applicant’s intention at the time of the filing.
In this case, the General Court focused on the following questions in examining whether Mr. Moreira was acting in bad faith at the time he filed the application for registration of the “NEYMAR” word sign:
- Whether Mr. Moreira knew that Neymar was a rising star in football whose talent was recognised internationally at the date of the application ;
- Whether, by filing the application, Mr. Moreira’s only intention was to exploit Neymar’s repute for his own benefit.
The General Court’s ruling
The General Court stated that it was clear, in light of the submitted evidence, that Neymar “was already known in Europe at the relevant date, in particular for his performances for the Brazilian national football team”. Considering Mr. Moreira possessed more than a little knowledge of the world of football at the relevant date, he could not have ignored the fact that Neymar was a professional footballer whose talent was recognised internationally.
Mr. Moreira claimed that he chose the name “Neymar” exclusively because of the phonetics of the word and not as a reference to the footballer. However, the General Court found that this argument was not credible and ruled that the choice of “Neymar” could not be a mere coincidence. Moreover, the Court noted that the “mark consists of only the word element ‘Neymar’, which is precisely the name under which [Neymar] acquired international renown in the world of football”.
Finally, the Court also stated that the fact that Mr. Moreira had filed an application for registration of another famous footballer’s name, Iker Casillas, as a word mark on the same day as the application for registration of the “NEYMAR” mark was filed, was an additional factor in concluding Mr. Moreira’s bad faith.
In light of the foregoing considerations the Grand Chamber found that the commercial logic behind M. Moreira’s application was to “free-ride” on Neymar’s reputation and to take undue advantage of it.
Consequently, the General Court rightly upheld the EUIPO’s decision confirming that Mr. Moreira was acting in bad faith when he filed the application for registration of the “NEYMAR” mark and dismissed Mr. Moreira’s action in its entirety.