In December 2012, Carlos Moreira (the Applicant) filed an EU trade mark application for the contested mark, NEYMAR. In April 2013, it was successfully registered. In February 2016, the footballer Neymar Da Silva Santos Júnior (Neymar) filed an application for a declaration of invalidity against the contested mark on the basis of bad faith which was upheld.
The Applicant appealed and in September 2017 the Board of Appeal dismissed the appeal. In November of that year, the Applicant appealed to the General Court.
It was recognised that the concept of bad faith is made out by reference to the origin of the contested sign, the logic underlying the filing, the events leading up to the filing and the intention of the Applicant. This intention can be a dishonest or otherwise sinister motivation departing from accepted principles of ethical behaviour or honest commercial practice.
The Board of Appeal's finding of bad faith relied on two elements:
- that the Applicant knew Neymar was an internationally recognised rising star in football
- the Applicant's sole motivation was to exploit Neymar's renown.
In response, the Applicant argued that Neymar was not well known in Europe at the time of the registration and that the fact he also applied to register the name of another footballer, Iker Casillas, had no bearing on the analysis of bad faith. Both the EUIPO and Neymar disputed these arguments.
Regarding the first element, evidence was put forward by Neymar showing that he was well-known in Europe at the time, particularly for his performances for the Brazilian national team.
This evidence included articles in France, Spain and the UK about Neymar from 2009 to 2012. Taking into account the Applicant's knowledge of football, apparent from his application for the mark "IKER CASILLAS", the Board of Appeal found it "inconceivable" that the Applicant did not know of Neymar's existence.
In relation to the second element, the Applicant claimed that he only chose the mark because of its phonetic qualities and not because of the footballer's name. The overlap was apparently a coincidence.
He claimed that he did not seek to obtain the registration so as to invoke it against Neymar, that Neymar had not opposed the registration, that the name "Neymar" was not protected or used as a trade mark at the relevant time and that there was no evidence that he intended to take advantage of Neymar's renown. All of the Applicant's arguments were disputed by the EUIPO and Neymar.
It was held that Neymar was already renowned as a footballer at the relevant date (including in Europe) and that as a result the Applicant must have known who Neymar was and so the registration of NEYMAR could not have been a coincidence. Therefore, there was no convincing reason for the application other than for the Applicant to benefit from Neymar's renown.
The Applicant also argued that the finding of bad faith was based on subjective speculation. In response and to the contrary, the court found that the decision relied on objective factors demonstrating bad faith and an intention to "free-ride" on Neymar's reputation.
Finally, the Applicant's arguments that he did not seek to register the mark so as to invoke it against Neymar, that bad faith may only have been established if he had continued to pursue registration despite Neymar's opposition and that "Neymar" was not protected at the time were held not to be capable of challenging the finding of bad faith.
The arguments were therefore irrelevant, the Board of Appeal's decision was upheld and the Applicant's mark was declared invalid. The Applicant was also ordered to pay costs.
Case Ref: T-795/17