Clearly, trademark law and sport always bring us great decisions or great reflections (as with Roger Federer).
After Lionel Messi, it is Neymar’s turn to be at the heart of an interesting dispute to be raised.
In 2012, a certain Mr. Moreira filed an EU trademark covering the word sign “NEYMAR” for goods and services in class 25: “clothing, shoes, headgear”.
Considering that Mr. Moreira had acted in bad faith, the famous PSG striker (not for long?), Neymar, acted in nullity of this eponymous brand.
The Cancellation Division and the Board of Appeal of EUIPO (the European Intellectual Property Office) considered that there had indeed been bad faith on the part of Mr. Moreira and that, in doing so, he could not validly register the trademark “NEYMAR”.
2-0 therefore for the famous striker!
But Mr. Moreira then decides to seize the General Court of the European Union, which ruled on these questions in a judgment of May 14, 2019 ( T-797-15 ). It is on this judgment that I suggest that you focus our attention today.
Mr. Moreira’s argument
Mr. Moreira’s argument is simple: he did not act in bad faith by registering the word sign “NEYMAR” for clothes, shoes and headgear, and his EU mark must therefore be declared valid.
The concept of bad faith within the meaning of trademark law
In its judgment of May 14, 2019 (T-797-15), the General Court first of all recalls that bad faith within the meaning of trademark law is not defined by legislation and that it is therefore an open concept (§16 of the judgment):
“In this regard, it should be noted that the notion of bad faith referred to in Article 52, paragraph 1 b) of Regulation No o 207/2009, is neither defined nor delimited or even described in any way in the legislation (…) ”.
Citing the case law of the Court of Justice of the European Union, the General Court goes on to explain that bad faith or the absence of bad faith must be assessed in concreto taking into account all the concrete facts of the case in question (§ 18 of the judgment) and that the criteria previously identified in the case-law of the Court are only illustrations and are not exhaustive (§19 of the judgment).
In §21 of its judgment, the Court indicates, in an interesting way, that the intention of the person filing a mark must be taken into account when assessing the existence, or not, of bad faith on his part:
“The intention of the applicant should also be taken into account when filing the application for registration (…)”.
It is precisely this notion of intention (or subjective motivation) of the applicant for the mark “NEYMAR” (namely Mr. Moreira) which will be the basis for the rest of the decision.
The in concreto examination of bad faith by the General Court of the European Union
Referring to the grounds previously accepted by the Board of Appeal of EUIPO, the Court considers that the questions to be decided in order to determine the bad faith, or not, of Mr. Moreira are as follows (§27 of the judgment):
- Did Mr. Moreira know, at the time of online filing of trademark “NEYMAR”, that footballer Neymar “was a rising football star whose talent was internationally recognized” ?
- Was Mr. Moreira’s sole objective, by registering the “NEYMAR” trademark, to take advantage of the fame of footballer Neymar?
According to EUIPO, the answer to these two questions is in the affirmative, which justifies bad faith.
Mr. Moreira disputes the position of EUIPO (§28 of the judgment) on the grounds that: Neymar only started playing in Europe in 2013, whereas the trademark he filed was registered in 2012 According to Mr. Moreira, it was therefore not possible to know, in 2012, that Neymar “was intended to be transferred to an important European club” in 2013, a fortiori because it is ”common for promising young footballers not to ultimately not achieve careers up to what could initially have been imagined about them ”. As for the fact that Mr. Moreira had also filed trademarks containing the names of other footballers, such as Iker Cassillas, Mr. Moreira simply considers that this is not relevant for the case in dispute, limited to the “NEYMAR” trademark.
The Court does not share the opinion of Mr. Moreira since, among other things:
- Neymar had already been the subject of strong media coverage in France, Spain and the United Kingdom in the years 2009 to 2012 and was presented on this occasion as a very promising football player, already attracting the attention of major European clubs. (§31 and 32 of the judgment). Neymar was therefore already known and enjoyed a reputation when the contested mark was filed.
- It is not credible to maintain that Mr. Moreira would have chosen to deposit the term “NEYMAR” simply for the phonetics of the name and that the fact that this corresponds to the name of the eponymous promising day would be only a coincidence (§45 of the ‘judgment), also taking into account the knowledge of the world of football that Mr. Moreira had.
- The intention of Mr. Moreira (to benefit from the fame of Neymar) is confirmed by an objective element: Mr. Moreira had also registered as a trademark the name of another football talent, the goalkeeper Iker Casillas (§50 of the stop). This external fact (relating to another player) simply comes to support, according to the Court, that Mr. Moreira was not unaware of who was Neymar and had not deposited this name in a purely fortuitous way (on the contrary, Mr. Moreira had an acquaintance football and was not at his first attempt since he had already filed a trademark corresponding to the name of the player Iker Cassilas).
- The Court qualifies Mr. Moreira’s attitude as “commercial logic” tending to “parasitically exploit the reputation of the intervener [Neymar] and to take advantage of it” (§51 of the judgment).
- For all these reasons, the bad faith of Mr. Moreira is established.
The Court rejects Mr. Moreira’s appeal and therefore confirms that it is impossible for him to register the “NEYMAR” mark.
3-0 for Neymar and red card for Mr. Moreira!
But the real current question today, is it not that of the future of Neymar and his departure from PSG? Unfortunately, this goes beyond my area of expertise as a lawyer in intellectual property, copyright, trademarks, patents …