On 14 May 2019 the EU General Court (case T-795/17) ruled on the appeal filed by Mr Carlos Moreira against the European Union Intellectual Property Office (EUIPO) and the well-known footballer Neymar Da Silva Santos Júnior (Neymar) against EUIPO’s decision, issued in the proceeding on the invalidity of the trademark “NEYMAR”.

In 2012 Mr Moreira had filed an application with EUIPO and had obtained the registration of the word mark “NEYMAR” for clothing, footwear and headgear. A few years later, Neymar filed an application for the declaration of invalidity of the registered trademark on the grounds of bad faith under Article 52(1)(B) of Regulation no. 207/2009 (now Article 59(1)(B) of Regulation 2017/1001). The application was granted by the Cancellation Division of EUIPO. The decision was subsequently upheld by the Second Board of Appeal of EUIPO.

Mr Moreira filed an appeal against the EUIPO’s decision before the European General Court. Although, during the proceeding before EUIPO, the applicant had stated that he was aware of the footballer’s existence at the date of the application for registration of the trademark, he claimed in his appeal that he wasn’t aware of Neymar’s international talent and, on the contrary, claimed that the footballer was not yet known in Europe when the contested trademark was registered (I.e., previous to his transfer to the Spanish club FC Barcelona from the Brazilian club Santos).

In the course of proceedings, the applicant denied having intended to benefit illegally from the footballer’s renown by seeking registration of the trademark; he claimed that he chose the name NEYMAR only and exclusively because of the phonetics of the word. He added that any possible finding of bad faith may have been established only if he had continued to pursue the procedure for registration despite the opposition, something that in the case at issue hadn’t taken place. He also noted that at the relevant date the name NEYMAR was neither protected as a trademark nor even used as such. Finally, he maintained that EUIPO had put forward no document or evidence in support of its argument that the applicant’s intention was to take undue advantage of the footballer’s renown.

In its decision, the EU General Court points out that, from the evidence submitted by Neymar in the proceeding before EUIPO, it is shown that the Brazilian footballer was internationally known under his first name and that he was well-known in Europe, especially in France, Spain and the United Kingdom, for his performances for the Brazilian national football team. He had already been famous for several years before his transfer to FC Barcelona in 2013 and, in particular, before the date of the application for registration of the trademark.

The General Court adds that the applicant possessed more than a little knowledge of the world of football, in fact on the day the applicant applied for registration of the contested trademark he also filed an application for registration of the word mark “IKER CASILLAS”, the name of another famous football player. Moreover, this circumstance was confirmed by Mr Moreira, who stated that he knew the world of football at the relevant date.

The EU General Court concludes that, since the applicant possessed more than a little knowledge of the world of football and the contested mark “NEYMAR” corresponds precisely to the name under which the football player Neymar Da Silva Santos Júnior became known, is inconceivable that the applicant had not been informed of Neymar’s existence at the time when he filed the application for registration of the contested mark. Moreover, the Court states that, without any doubt, Mr Moreira was well aware that the footballer would soon be transferred to a very important European club; this, first of all, because it is common knowledge that Europe is a prime destination for aspiring footballers in the light of the levels of remuneration and opportunities it offers and, in the present case, because many newspapers and news websites mentioned the footballer’s future transfer to a European club.

The General Court rejects also the applicant’s claim that the Board of Appeal of EUIPO relied on mere speculation in finding that his intention had been to take undue advantage of the footballer’s renown: in the General Court’s opinion, the Board of Appeal relied on objective factors such as, in the case at issue, press and internet articles that showed Neymar as a talented footballer with a global standing in the world of football at the relevant date, as well as the application for the registration of the word mark “IKER CASILLAS”.

Nor could the additional claims of the applicant, in the General Court’s opinion, overturn the Board of Appeal’s finding that the applicant was acting in bad faith. This opinion is based on the applicant’s dishonest intention at the relevant date.

Regarding the applicant’s claim to declare the contested mark valid, the General Court recalls that it may annul or alter a decision of the Board of Appeal only upon one of the grounds for annulment or alteration set out in Article 65(2) of Regulation no. 207/2009 (now Article 72(2) of Regulation 2017/1001), grounds that, in view of the above, are not met in the case at hand.

The General Court, therefore, dismissed the action in its entirety and ordered the applicant to pay the costs.