Brazilian footballer Neymar Jr, full name, Neymar Da Silva Santos Júnior, has won a trade mark dispute concerning his own name in the European Courts. The judgment confirms that the word mark “NEYMAR” which was registered by a Mr Carlos Moreira as a trade mark in 2012, was filed in bad faith and accordingly, declared invalid.

REGISTERED IN BAD FAITH

In 2012, Mr Moreira filed his application for the word mark “NEYMAR” at the European Union Intellectual Property Office. It was duly registered in April 2013, in class 25 in respect of product in clothing, footwear and headgear.

In 2016, Neymar applied for a declaration of invalidity in respect of Mr Moreira’s word mark, on the grounds that it had been registered in bad faith.

Article 52(1)(b) of the Regulation No 207/2009 provides that an EU trade mark must be declared invalid if the applicant acted in bad faith when filing the application for registration of that trade mark.

Bad faith is not a simple concept to pin down and is determined on a case-by-case basis. The Court (First Chamber) did however provide guidance in Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, Case C-529-07 at [54], where it was ruled that in order for a Court to determine whether an applicant has acted in bad faith when registering the mark, all relevant factors specific to that particular case which pertained at the time of filing the application. The intention of the applicant was a particularly important factor.

The EUIPO’s Cancellation Division ultimately decided that Mr Moreira had registered the word mark in bad faith in an attempt to take ownership of the footballer’s well-known name and to profiteer from its renown.

THE APPEAL

Mr Moreira disagreed with the decision of the Cancellation Division and appealed to the EU General Court. Although he accepted that he had heard of Neymar, he stated that the footballer was not well known in Europe.

Mr Moreira further denied that this registration of the mark was for the purpose of exploiting Neymar’s renowned status, instead claiming that he chose to register “NEYMAR”, as he liked the phonetic sound and that any link to the footballer was purely coincidental.

WAS NEYMAR WELL KNOWN IN EUROPE IN 2012?

Mr Moreira’s argument that the Brazilian footballer was not well-known in 2012 argument is notably flawed and was rejected by the Court.

Neymar, as at 2012, although with Santos Futebol Club in Campeonata Brasiliero Serie A was widely recognised and being touted as prodigal talent attracting interest from France, Spain and the United Kingdom.

Neymar was also a member of Brazil’s 2012 London Olympic Football team and had at that point made 25 appearances for his national team.

The CJEU agreed noting that ‘[Neymar] was a very talented football who already had global standing in the world of football’ at [50].

Mr Moreira’s attempt to claim he had little knowledge of the footballing world was also brought into question, as he had on the same date as filing for “NEYMAR”, filed an application for the word mark “IKER CASILLAS”, who was at that point the captain of Real Madrid and World Cup winning goal keeper.

DECISION

Accordingly, the CJEU found that the Mr Moreira had dishonest intention at the time of registration and had registered the word mark maliciously. The CJEU therefore upheld the declaration of invalidity of the word mark “NEYMAR”.