Date: 13 September 2019
In Case T-795/17 Carlos Moreira v EUIPO, the EU General Court upheld a EUIPO Board of Appeal decision that in registering NEYMAR as an EU trade mark Carlos Moreira had acted in bad faith. The court rejected Mr Moreira’s case that he had been unaware of the famous footballer, not least because he had applied to register the name of former Spain and Real Madrid goalkeeper Iker Casillas on the same day.
The well-known Brazilian football player Neymar succeeded in a trade mark dispute before the EU General Court, which upheld a EUIPO Board of Appeal decision declaring an EU trade mark (EUTM) for the word NEYMAR invalid on the basis that it had been filed in bad faith by the EUTM owner, Carlos Moreira, in an attempt to exploit and profit from the reputation of Neymar. The court found that the evidence clearly showed the celebrity status of Neymar at the time the application was filed. Due to his rising career, many football clubs would have been interested in him at that time, which generated serious media coverage and, therefore, it was “inconceivable” that Mr Moreira had been unaware of Neymar at the time. Another blow for Mr Moreira was the fact that, on the very same day, he had filed a EUTM application for the name “IKER CASILLAS”, a former goalkeeper for the team Real Madrid.
As this decision reminds us, “there is no simple, decisive test for establishing whether a trade mark application was submitted in bad faith”, in the words of Advocate General Sharpston, in her Opinion in Chocoladefabriken Lindt & Sprüngli. As AG Sharpston further explained, “bad faith relates to a subjective motivation on the part of the trade mark applicant – a dishonest intention or other ‘sinister motive’ – which will none the less normally be established by reference to objective criteria; it involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against such standards”. For a finding of bad faith, there has to be (i) some action by the EUTM proprietor which clearly reflects a dishonest intention; and (ii) an objective standard against which such action can be measured and subsequently qualified as constituting bad faith.
In the current case, and in view of the evidence submitted by Neymar, the burden of proof shifted from Neymar as applicant for a declaration of invalidity to the Mr Moreira, the EUTM proprietor, insofar as the latter should have been able to explain and demonstrate the reasons for such a situation. Unfortunately for Mr Moreira, he was unable to provide any explanations as to why, out of all the names he could have chosen to register as a trade mark (including his own name), he happened to land on the rare and well-known first name “Neymar”.
In Neymar’s view, the intention was in fact to deprive him of a sign that was necessary for the continuation of his activities, and such intent could also be inferred from his wish to take advantage of his image and names through the filing of three subsequent figurative EUTMs featuring “Neymar”.
Mr Moreira did not comment on the use made of the contested EUTM, or clarify why he filed further applications without Neymar’s consent. He was equally silent as to why he had also registered the EUTM word mark IKER CASILLAS and two figurative EUTMs (shown below) for footwear, clothing and headgear in Class 25.
The mere circumstance of having filed those marks did not prove, as such, the bad faith allegation. However, as this decision illustrates, filing of other marks in dubious circumstances or applying for other marks that appear to misappropriate other traders’ goodwill is likely to be viewed by the court as strongly indicative of the intentions of the applicant of a certain mark.
Interestingly, Mr Moreira retains a foothold in the world of trade marks coinciding with the names of famous footballers: he remains the registered owner of a figurative EUTM for “NYM” covering footwear, clothing and headgear in Class 25 (shown below), and the IKER CASILLAS marks mentioned above have not been opposed.
Our full review of this case appears in: Ent. L.R. 2019, 30(7), 212-215.
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