NEYMAR GOT HIS NAME BACK
With the good name of sport stars, good money can still be earned – even if this takes place in the grey area of the legally permissible. Boris Becker can sing a song about it and now the Brazilian superstar Neymar has had to learn how quickly the right to his own name can be lost.
So the clever Portuguese businessman Carlos Moreira 2012 had registered „NEYMAR“ as a word mark for class 25, specifically for clothing, shoes and headgear (EU 011432044) and had two fancy word/picture marks with logo and the word component „NEYMAR JR“ followed. In any event, OHIM did not object to the applicant’s lack of reference to football savings and registered the marks within 4 months.
Neymar – with his civil name Da Silva Santos Júnior – understandably took a completely different view here, especially since he has meanwhile obtained his own protection for his name in the same class 25 via his NEYMAR SPORTS & MARKETING LTD (EU 014343545). It should be noted only marginally that the Office took two years to finally grant registration.
At Neymar’s request, the Office of the European Union for Intellectual Property (EUIPO) in Alicante revoked the registration of the name as a trademark for clothing, shoes and hats applied for by Moreira in 2016. The defeated businessman followed this up with the action before the General Court of the European Union (“EuG”) and claimed to have filed his application for trademark protection out of pure pleasure at the sound of the word „Neymar“, ignorant of the popularity of the goal scorer of former Barcelona and now France’s champion Paris St. Germain without other football expertise.
But the judges saw it quite differently. On the one hand, it was hardly credible that the Brazilian footballer was unknown to Moreira, all the more so as he had filed an application for the trade mark “IKER CASILLAS” – Spain’s world and European champion goalkeeper – together with his wish to register the trade mark “NEYMAR”. The revocation on the ground of bad faith was therefore entirely legal (T-795/17).
The question arises, however, why the Office did not pull the ripcord already in connection with the application.
Below are some extracts from the judgment of the Luxembourg judges in the wording:
„The Court states that, according to the information contained in the EUIPO’s decision, the evidence submitted in support of its application for annulment shows that Mr Da Silva Santos Júnior was already known in Europe at that time, in particular for his matches for the Brazilian national football team, and that there were numerous reports of him in the European media between 2009 and 2012, in particular in France, Spain and the United Kingdom. Several years before his transfer to FC Barcelona in 2013, Mr Da Silva Santos Júnior had thus been recognised as a very promising footballer and had attracted the attention of major European football clubs for his future commitment.
The Court also confirmed that Mr Moreira had more than limited knowledge of the world of football, as shown by the fact that, on the day on which he applied for the trade mark „NEYMAR“, he also applied for a trade mark bearing the name of another famous footballer, namely the word mark „IKER CASILLAS“. Moreover, Mr Moreira has already admitted that he knew the world of football at that time. In those circumstances, and in view of the fact that the mark consisting solely of the word element ‚NEYMAR‘ corresponds exactly to the name under which Mr Da Silva Santos Júnior appeared in football, it is inconceivable that Mr Moreira was unaware of the existence of the footballer when he applied for registration of the mark ‚NEYMAR‘.
Mr Moreira denies that he applied for the trade mark „NEYMAR“ solely in order to take advantage of the reputation of the Brazilian footballer. He submits, inter alia, that he chose the name ‚NEYMAR‘ for phonetic reasons and not as a reference to the player. The word mark ‚NEYMAR‘ was therefore chosen purely by chance and not for the deliberate use of the name of a well-known footballer. The Court rejects the argument that that choice was based on chance because, at the relevant time, the footballer was already well known in the world of football, including Europe, and because Mr Moreira had more than limited knowledge of him. He cannot therefore claim that he did not know who Mr Da Silva Santos Júnior was. In that regard, the Court points out that the mark consists solely of the word element ‚NEYMAR‘, which corresponds to the name under which the Brazilian has acquired an international reputation in the world of football.
The Court adds that Mr Moreira does not put forward a convincing argument against EUIPO’s assessment that no reason other than that of taking advantage of the footballer’s reputation as a free-rider is such as to explain his application for registration of the contested mark.
Finally, the Court rejects Mr Moreira’s argument that the EUIPO based the false conclusion that he had unjustifiably sought to benefit from the footballer’s reputation in order to obtain certain financial advantages on mere speculation. The Court finds that the EUIPO based that conclusion, inter alia, on objective factors such as a set of evidence consisting of press and online articles and on the fact that Mr Moreira had filed the trade mark application „NEYMAR“ on the same day as the word mark „IKER CASILLAS“.”