In a recent judgment, the General Court of the European Union (the EU General Court) has held that a trade mark application for "NEYMAR" made in 2012 was filed in bad faith and ruled in favour of its invalidation.
In December 2012 Mr Carlos Moreira (the Applicant) filed an application to register the word "NEYMAR" as a European Union Trade Mark (EUTM) for goods in class 25 (clothing, footwear and headgear) (the Application). The Application subsequently proceeded to publication without objection and was ultimately registered in 2013.
In 2017, the Brazilian soccer star Neymar Da Silva Santos Junior (Neymar Jr) filed an application for a declaration of invalidity under Article 59(1)(b) of the European Union Trade Mark Regulation (EUTMR) arguing that the Application was filed in bad faith.
Neymar Jr's application for a declaration of invalidity was reviewed and assessed by the Cancellation Division of the European Union Intellectual Property Office (EUIPO) and subsequently by the Second Board of Appeal, both of which agreed that the Application for the EUTM had been made in bad faith. This decision was appealed to the EU General Court with the Applicant arguing that the Board of Appeal had incorrectly assessed:
- his knowledge of the fact that Neymar Jr was a rising soccer star; and
- his motive, namely that the Application had been filed to exploit Neymar Jr's renown.
The concept of bad faith
The EU General Court considered recent case law on the concept of bad faith and Article 52(1)(b) of the EUTMR which requires that account must be taken of all relevant factors specific to the case, in particular whether:
- the applicant knows that a third party in another Member State is using an identical or similar sign;
- the intention of the applicant at the time of registration is to prevent a third party from continuing to use such a sign; and
- the degree of the legal protection enjoyed by the third party's sign and by the sign for which registration is sought.
The EU General Court found that (a) – (c) were non-exhaustive and served only to provide examples of factors that could be taken into account when deciding whether an application was made in bad faith. The Court made it clear that account must also be taken of the commercial logic underlying the filing (i.e. the subjective motivation of the applicant).
EU General Court decision
Knowledge of the Applicant
In support of his case, the Applicant argued that Neymar Jr was not a rising soccer star in Europe at the date of the filing of the EUTM Application and had only commenced playing in Europe in 2013.
The EU General Court was unconvinced by this argument and concluded that there was sufficient evidence to establish that Neymar Jr was in fact well recognised as a promising talent in 2012 in France, Spain and the United Kingdom and had already drawn the attention of top-flight clubs (leading to his ultimate transfer to FC Barcelona in 2013). Accordingly, the EU General Court held that the Applicant was incorrect in arguing that Neymar Jr was "unknown in the world of football" at the date of the Application. In fact, by 2013 Neymar had already been nominated for three separate FIFA Puskas Awards, finishing third in 2012 and 2013 but having won the award outright in 2011 for his goal for Santos against Flamengo in the Brasileiro Serie A, which attracted huge global attention.
Motive of the Applicant
The Applicant argued that he did not intend to benefit from Neymar Jr's renown and that the name NEYMAR was chosen purely as a mere coincidence and on the basis of the phonetics of the word. The EU General Court found that no evidence existed to establish this, noting that that Neymar Jr's renown was already established in 2012. The Applicant, who had demonstrated a knowledge of the sport (having filed an application for CASILLAS concurrently) could not argue that he did not know who Neymar Jr was at the relevant date.
In light of the above, the EU General Court upheld the decision of the Board of Appeal that the commercial logic of the Application was to "free ride" on and take advantage of Neymar Jr's reputation.
From an image rights perspective, athletes are increasingly seeking to register and rely on trade marks as a means through which to prevent unauthorised use of their name. As previously reported by us, Lionel Messi was successful in 2018 in securing protection for MESSI in a wide range of products including sporting equipment. However, the extent to which any such athletes will be able to successfully register personal brands as trade marks will depend on how well known that individual is to the average consumer. While global superstars such as Neymar Jr, Messi and Ronaldo can easily argue that their names are famous enough to dispel the likelihood of any confusion, this threshold remains very high.
In circumstances such as those in the current case, where no registered rights are held by the athlete, it is reassuring that a bad faith application can nonetheless be filed to prevent third parties exploiting the athlete's reputation and popularity. This is particularly helpful for athletes whose names and reputation may not meet the threshold for registration of an EUTM. The emphasis placed by the EU General Court on the subjective motivation of the applicant rather than simply the global renown of the individual, will encourage athletes to take steps to prevent opportunists cashing in on their sporting success.