May 24, 2019

Invalidity of the mark “NEYMAR” applied for in bad faith.

On 14 May 2019, the General Court of the European Union uphold the initial decision of the European Intellectual Property Office (EUIPO) that annulled the European Union mark “NEYMAR” requested in bad faith by an individual to distinguish clothing, footwear and headgear.

The start of this case took place in December 2012, when Mr Carlos Moreira applied for the mentioned mark, which was initially registered by EUIPO in April 2013.

Subsequently, in February 2016, Mr Da Silva Santos Junior “Neymar” filed an application with EUIPO for a declaration of invalidity against that mark, which was upheld by the Office.

This decision of nullity was appealed by Mr Moreira before the General Court of the European Union, which has confirmed the nullity of the same, although this decision is still subject to appeal.

The Court upholds the decision of EUIPO that Mr Moreira acted in bad faith when he filed the application considering that the evidence submitted in the proceeding shows that Mr Da Silva Santos Junior “Neymar” was already known in Europe, in particular in France, Spain and the United Kingdom, for his performances for the Brazilian national football team.

The Court has also taken account of the fact that Mr Moreira filed an application for registration of the word mark “IKER CASILLAS” at the same time he sought registration of the mark “NEYMAR”, which shows that the applicant’s prior knowledge of the world of football was not limited and that it is inconceivable that Mr Moreira was not aware of the existence of the footballer at the time when he filed the application. Mr Moreira, in defence of the registration in his favour, claims that he applied for the mark because of the phonetics of the word.

The General Court has also pointed out that Mr Moreira puts forward no convincing argument to refute EUIPO’s assertion that the application for the NEYMAR mark was merely intended to exploit the renown of the Brazilian footballer in a parasitic manner.

Article by Teresa Gonzalez.