When a striker acts as a defender: EU General Court’s decision “NEYMAR” (T-795/17)

When a striker acts as a defender: EU General Court’s decision “NEYMAR” (T-795/17)

With its decision dated 14 May 2019, the European General Court confirms a decision of the European Union Intellectual Property Office’s Board of Appeal invalidating European Union trademark registration no. 011432044 “NEYMAR”.

I.    Introduction to Neymar and his brand value

Since 2017, the famous Brazilian soccer pro Neymar da Silva Santos Júnior (“Neymar”) has been contracted to Paris Saint-Germain. His moving to the French champion involved costs amounting to 222 million Euros (EUR 222,000,000) and made Neymar the world’s most expensive football player in history.

II.    Background of the case

EU trademark no. 011432044 “NEYMAR” (word mark) was filed by a Portuguese individual for goods in class 25 (clothing, footwear, headgear) on 17 December 2012; the European Union Intellectual Property Office (EUIPO) registered the mark on 12 April 2013. 
The same individual filed for a EU trademark “IKER CASILLAS” (no. 011431996) also on 17 December 2012, and in 2015 for further trademarks containing the element “NEYMAR” or abbreviations thereof (i.e. EU trademark registration no. 013533261 “NJR”, no. 013334503 “NJR NEYMAR JR” and no. 013002894 “NEYMAR FOOTWEAR”).

In early 2016, Neymar attacked EU trademark registration no. 011432044 “NEYMAR” with respect to all goods by filing an invalidity action with the EUIPO arguing on the one hand that the application was registered contrary to his earlier name rights. In this connection, Neymar also underlined the existence of his company “NEYMAR SPORT E MARKETING S/S LIMITADA” to which he had given a license to develop and commercialize products on which the pseudonym “NEYMAR” appears.

In addition, Neymar argued that the applicant was acting in bad faith when filing the application which would constitute an absolute ground for refusal.

Neymar could win both EUIPO instances (Examining Division and Board of Appeal). Therefore, the applicant filed an action to the European General Court (GC) on 28 November 2017 arguing in particular that the EUIPO Board of Appeal was wrong to find that the applicant was acting in bad faith when he filed the application for registration of the contested mark.

III.    The decision of the General Court

The decision of the GC fully supports the position of the EUIPO and of Neymar who intervened the proceedings. 

Initially, the GC outlines the European Court of Justice’s (ECJ) criteria regarding the way in which the concept of bad faith should be interpreted: account must be taken of all the relevant factors specific to the particular case which obtained at the time of filing the application for registration of a sign as an EU trademark, in particular

(i)    the fact that the applicant for registration knows or must know that a third party is using, in at least one member state, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought

(ii)    the intention of the applicant for registration to prevent that third party from continuing to use such a sign and

(iii)    the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

In this connection, the GC comes to the conclusion that the applicant of the contested mark could not have been unaware of the rights he infringed since Neymar was famous in European Union countries even before 17 December 2012, although he only started playing in Europe in 2013 (after the relevant date!). This is, according to the GC, particularly supported by a portfolio of evidence submitted by Neymar showing that he was a Brazilian football player internationally known under the name “Neymar” and that he was already known in Europe at the relevant date, in particular for his performances for the Brazilian national football team. The GC acknowledges that Neymar was already recognized as a very promising football player and compared to the most renowned football players at that time. He had drawn, accordingly, the attention of top-flight clubs in Europe in view of future recruitment several years before his actual transfer to FC Barcelona in 2013. 

In addition, the judges of the GC are of the opinion that the fact that the applicant of the contested mark had – on the same date as he had applied for registration of the contested mark – also sought registration of the name of another well-known football player as a trademark, namely Iker Casillas. This shows that the applicant was well aware of the world of football and acted in bad faith. They find it inconceivable that the applicant had not been informed of the intervener’s existence at the time when he filed the application for registration of the contested mark.

Under the second part of his single plea, the applicant denied, in essence, having intended to benefit illegally from the intervener’s renown by seeking registration of the contested mark. In this connection, he argued that the decision to choose the word mark “NEYMAR” was a mere coincidence and does not stem from a conscious desire to use the name of a known football player. The GC rejected this argument by repeating that it cannot be considered that the applicant did not know who the intervener was at the relevant date. According to the judges of the GC, the EUIPO Board of Appeal’s finding that the applicant was acting in bad faith when he filed the application for registration of the contested mark is based on the applicant’s dishonest intention at the relevant time. Moreover, the assessment itself as to whether that intent was dishonest follows from the fact that the application for registration was filed deliberately with the purpose of creating an association with the intervener’s name in order to benefit from its attractive force.

Finally, the GC dismisses the applicant’s action in its entirety and orders him to pay the costs of the proceedings, including those incurred by the intervener before the Board of Appeal of the EUIPO.

IV.    Remarks

The GC’s decision is very interesting and important for future “bad faith” cases. What we learn is that it is of great importance to carefully collect and provide evidence supporting the “bad faith”-argument – like Neymar’s representatives obviously did perfectly right from the beginning of the invalidity proceedings.

The battle was not (yet) fought through all possible EU instances – the applicant may still appeal the GC’s decision at the ECJ. It would, however, not surprise if the highest European instance would also maintain the line of the previous instances in case the applicant would indeed make the last step and put the case to the ECJ. 

For more information, please find the full decision here: http://curia.europa.eu/juris/document/document.jsf?text=&docid=214045&pa....

By the way: the further “NEYMAR” trademarks (EU trademark registration no. 013533261 “NJR”, no. 013334503 “NJR NEYMAR JR” and no. 013002894 “NEYMAR FOOTWEAR”) have meanwhile also been cancelled. EU trademark no. 011431996 “IKER CASILLAS” is still registered and has apparently not been attacked, so far.