The Brazilian football star Neymar is probably known worldwide. A Portuguese had tried to secure the rights for the designation “NEYMAR” as a trademark. Neymar opposed to this and can now also record a legal success for himself. The European Union Court of Justice (ECJ) ruled on June 11, 2019 that the “NEYMAR” trademark filed by the Portuguese is void (judgment of 14/05/2019, Az. T-795/17) confirming a decision of the Office of the European Union Intellectual Property (EUIPO).
Background of the case before the ECJ was a prolonged dispute between Neymar and the trademark applicant. In 2013, the trademark applicant had applied for the trademark rights for “NEYMAR” in the EU for clothing, shoes and headgear. The trademark applicant claimed to have chosen the designation for tonal reasons and not as a reference to the player. The registrant also said that although he knew about Neymar’s existence, he did not know that the Brazilian was an aspiring footballer. He said that Neymar was still unknown in Europe at this time.
However, the ECJ saw it differently. The judges confirmed EUIPO’s view that the Portuguese acted in bad faith when registering the mark. Neymar was known in Europe in 2013 and earlier, mainly because of his matches for the Brazilian national team. Major European football clubs had become aware of him several years before moving to Barcelona in 2013. In addition, there have been numerous reports from 2009 to 2012 about the promising talent in European media.
The ECJ also explained that the trademark applicant obviously had “more than limited knowledge of the world of football”, as he applied for the word mark “IKER CASILLAS” (the name of the 2010 Spanish World Champion goalkeeper) at the same day as the NEYMAR trademark,.
The result of the ECJ seems to be correct, but the question remains whether the knowledge of a football player would be sufficient for the justification of bad faith. There exists other decisions of courts around the world, that require more arguments to justify bad faith when registering a trademark.