What can be the basis of deletion if somebody has a registered trademark which is identical to the name of a world-famous footballer? What are the factors to consider when assessing whether the trademark applicant acted in bad faith? In his fresh judgement, the Court of Justice of the European Union gave answer to these questions and we shortly summarize them.
In 2012, Carlos Moreira has filed an application for the registration of the word 'NEYMAR' as an EU trademark. Early 2013, 'NEYMAR' was registered as an EU trademark in respect of clothing, footwear and headgear.
In 2016, the famous football star Mr. Neymar Da Silva Santos Junior ('Neymar') requested the NEYMAR trademark to be declared invalid. Neymar claimed that Mr. Moreira, the applicant was acting in bad faith when he filed the application for registration.
The European Union Intellectual Property Office (EUIPO) upheld Mr. Neymar's application establishing that Mr. Moreira acted in bad faith since
a) he knew that Neymar was a rising football star when he filed the application and
b) his only motive was to exploit Neymar's renown and to benefit from it.
2) Mr. Moreira's arguments
Mr. Moreira has filed a claim with the CJEU with the goal of the declaration of the validity of the NEYMAR trademark. He claimed that the EUIPO incorrectly assessed that when applying he knew that Neymar was a rising star and the motive of the registration was to free-ride Neymar's reputation.
Although Mr. Moreira stated that he knew the world of football and was aware of Mr. Neymar's existence, he claimed that Mr. Neymar was not yet known in Europe in 2012. Thus, he did not know that Mr. Neymar was a rising star at the time of the application.
Mr. Moreira further claimed that he only chose the word 'Neymar' because of its phonetics and his choice was a mere coincidence and not a conscious desire to use the name of a known footballer. In his opinion he was not acting in bad faith as Mr. Neymar never opposed the registration and the work 'Neymar' was neither protected as a trademark nor used as such.
3) Was Mr. Neymar known in Europe and by Mr. Moreira?
In the initial proceeding before the EUIPO, Mr. Neymar has submitted evidence which prove that he as a Brazilian footballer was internationally known under his first name, Neymar, he was recognised as very promising football player and he was already known in Europe in 2012.
Further, on the day Mr. Moreira applied for the registration of the NEYMAR trademark, he also filed an application for the registration of the word mark IKER CASILLAS.
The CJEU, taking into account the above facts and agreeing with the EUIPO's assertion established that
- Mr. Neymar was in fact known in Europe at the time of the application,
- Mr. Moreira possessed more than little knowledge of the world of football thus
- it is unlikely that Mr. Moreira was unaware of the fact that Mr. Neymar is a professional footballer whose talent was recognized.
4) Has Mr. Moreira wanted to exploit Mr. Neymar's renown?
First, the CJEU rejected the argument of Mr. Moreira that the choice of the sign 'NEYMAR' as a trademark, was a mere coincidence.
The CJEU has taken into account that fact the trademark consists of only one word element which is identical to the name under which Mr. Neymar acquired international renown in the world of football. This interpreted together with the fact that Mr. Moreira had more than little knowledge of the world of the football contradict the "theory" of coincidence.
Second, the CJEU confirmed the EUIPO's deduction that the real purpose of the commercial logic behind Mr. Moreira's application was to 'free-ride' on Neymar's reputation and take advantage of that reputation. Mr. Moreira's intention was to create an association with Neymar's name in order to benefit from its attractive force. Mr. Moreira could not put forward any convincing argument to disprove the EUIPO's finding.
In his judgment, the Curia provided more clarification in relation with which factors need to be considered when deciding about whether an applicant acted in bad faith when applied for registration of a specific sign. Given that the concept of the bad faith is not defined by law it is always good to receive some clues from the CJEU.
Moreover, an important lesson for everyone is to be realistic when deciding about your legal strategy in a dispute.
In my opinion it was a very big tactical mistake to claim by Mr. Moreira that he did not know that Neymar was recognized footballer. He should not have done it in a situation where it was clear that he requested the registration of the trademark 'IKER CASILLAS' on the same day as the registration of the 'NEYMAR' trademark. Another mistake was that Mr. Moreira presented the 'coincidence-theory' without giving any possible explanation what 'Neymar' could mean and why is it used by him.
To sum up the above, be prudent when filing an application for trademark registration and do not step on the toes of world-famous football players.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.