June 10, 2019
The applicant, Mr Carlos Moreira, was the owner of a EU trade mark for the word NEYMAR in Class 25 covering “Clothing, footwear, headgear”. The mark was registered on 12 April 2013.
Neymar Da Silva Santos Júnior, the well-known Brazilian footballer, applied to have the registration declared invalid under Article 52(1)(b) (bad faith) of the Trade Mark Regulation (207/2009/EC). The Cancellation Division upheld the application. Mr Moreira appealed and the Second Board of Appeal dismissed the appeal.
Mr Moreira appealed to the GC, arguing that the BoA had erred in finding that he had acted in bad faith when he filed the application. Mr Moreira alleged: (i) the BoA was wrong to find that Mr Moreira knew that Neymar was a rising star in football whose talent was recognised internationally at the relevant date; and (ii) the BoA was wrong to find that, when he filed the application, Mr Moreira had no motive other than to exploit Neymar’s renown in order to benefit from it. Mr Moreira also asked the GC to declare the mark valid and therefore alter the BoA’s decision.
The GC found that the evidence submitted by Neymar, which consisted of press articles and website excerpts from 2009 to 2012, showed that he was a Brazilian footballer, internationally known under his first name, Neymar, and that he was already known in Europe at the relevant date. The evidence also showed that Neymar was highly publicised at that time, especially in France, Spain and the UK, and that he had drawn the attention of the top clubs in Europe, which had resulted in his transfer to FC Barcelona in 2013.
The evidence also showed that, on the same day that Mr Moreira filed his application, he had also applied to register the word mark IKER CASILLAS, the name of another famous footballer. Therefore, the GC said, the BoA had been right to find that Mr Moreira possessed more than a little knowledge of the world of football. Accordingly, it was inconceivable that Mr Moreira did not know of Neymar’s existence at the relevant time.
Given that the mark in question consisted of the single word “neymar”, Mr Moreira’s argument that his application was just a coincidence relating to the phonetic characteristics of that mark was not credible. The BoA had been right to find that the only reason Mr Moreira had filed the application was to exploit Neymar’s renown in order to benefit from it.
The GC noted that, pursuant to Case C-529/07 Chocoladefabriken Lindt & Sprüngli (EU:C:2009:361), bad faith must be assessed, inter alia, in the light of the applicant’s intention. This is a subjective factor, which must be determined by reference to the objective circumstances of the particular case.
Here, the BoA had relied on two objective elements: Neymar’s documentary evidence, and Mr Moreira’s application for IKER CASILLAS made on the same day. Therefore, it had not speculated as to Mr Moreira’s intention and had been entitled to find that Mr Moreira’s intention had been dishonest and that the real purpose behind his application was to “free-ride” on Neymar’s reputation and take advantage of it. This was sufficient to amount to a finding of bad faith.
Mr Moreira also asked the GC to declare his mark valid and therefore alter the BoA’s decision. Given that the BoA had been correct in its findings on bad faith, the GC said that it could not be said that the BoA’s decision had been vitiated by any of the grounds of illegality in Article 65(2) of the Trade Mark Regulation to allow the GC to annul or alter the BoA’s decision.
Mr Moreira’s appeal was dismissed in its entirety. (Case T-795/17 Carlos Moreira v EUIPO EU:T:2019:329 (14 May 2019) — to access the judgment in full, go to the curia search form, type in the case number and follow the link).