Disputed trademark: Neymar scores in legal dispute

Portuguese entrepreneur had previously secured the intellectual rights to the word “NEYMAR”, owning the EU trademark since 2013. There has since been an ongoing disputed trademark / legal battle after Neymar Da Silva Santos Junior discovered the trademark. However, European Courts concluded on 11 June 2019 that the intent of Mr Moreira at the time of the application was to exploit the player’s reputation and ultimately increase sales.

Mr Moreira filed the application in December 2012 seeking to register the EU trademark for goods in class 25 (clothing, footwear, headgear). The mark proceeded without objection and was subsequently registered in 2013. In 2016, Neymar applied for a declaration of invalidity of Mr Moreira’s trademark, claiming it had been registered in bad faith.

Article 52(1)(b) of Regulation No 207/2009 states that an EU trademark must be declared invalid if the applicant acted in bad faith when filing the application for registration of the trademark.

The European Union Intellectual Property Office (EUIPO) upheld Neymar’s application establishing that Mr. Moreira acted in bad faith as:

1. He had the knowledge that Neymar was a rising football star when he filed the application and;
2. He had the motive to exploit Neymar’s reputation in order to benefit from it.

The appeal

Mr Moreira claimed to have chosen the mark exclusively for phonetic reasons and not as a reference to the player. He claimed that any link between his mark and the player was purely coincidental. The applicant also alleged that although he had heard of Neymar, he did not know that the Brazilian would be well known within Europe. Mr Moreira contested in court he believed that it was not until 2014 that Neymar had become well known for his football skills.

The decision

The Board of Appeal was unconvinced by Mr Moreira’s argument, concluding that Neymar had submitted sufficient evidence to show that he was internationally known under his first name as a footballer in Europe at the time that the application was submitted in 2012. 

It was found that Neymar had been highly publicized before the date of the application, due to his performance with the Brazilian national side and nominations for three FIFA awards.

Furthermore, it was found that Mr Moreira had also applied for the word mark “IKER CASILLAS”; the name of the well-known Spanish goalkeeper, on the same day that he had registered the “NEYMAR” trademark. 

With this evidence, the court stated that it was clear that the applicant had more than a limited knowledge of football at the time of the application. 

Accordingly, it was implausible that the applicant did not know of Neymar’s reputation at the relevant time.

In light of the above, the court ruled on 11 June 2019 that the application was made in bad faith with dishonest intentions to take advantage of Neymar’s reputation. 

The court stated that “Mr Moreira has put forward no convincing argument to disprove that there was no explanation for his application for registration of the contested mark other than the desire to free-ride on the footballer’s renown.” 

Therefore, the judgment of the court found the “NEYMAR” trademark filed by the Portuguese business owner to be void, confirming the original decision of the EUIPO.

Ensuring your trademark is not registered in bad faith

Trademark applicants must be wary of individuals that share the same name as their mark if they are well known at the time the application is submitted. This is the second intellectual property victory for a footballer defending their right to prevent third parties from exploiting their fame and reputation within the last year. 

Lionel Messi also succeeded in a trademark dispute before the European General Court in an opposition against a Spanish business owner in 2018 in the hope to void the earlier mark and register his own name under the EU trademark “MESSI”.

It is clear from this decision that the ability to use the name of an athlete will depend on how well known that individual is to the average consumer. 

As a business owner, it is important to keep in mind that when registering a trademark, if it is found to have been applied for in bad faith or to take advantage of a famous individual, it could be found void later down the line.

Expert advice on trademark disputes 

SO Legal has offices across the South East. If you are involved in a trademark dispute, our team of solicitors can help you understand your options.