The Court of Justice of the EU (CJEU) has recently ruled in favour of the Paris St Germain forward, Neymar, in a trademark dispute over his own famous name, confirming a declaration of invalidity of the mark and trademark filing in bad faith.
Our paralegal, Nina Holmes, takes a look at the trademark dispute.
The case began in 2012, when Mr Carlos Moreira (who has no connection to Neymar himself) filed an application with the EU’s Intellectual Property Office to register the word ‘NEYMAR’ as a trademark, which was subsequently approved in April 2013. This meant that Moreira was free to use the name across a wide range of products, including t-shirts, hats and sports shoes.
Neymar, naturally wanting the trademark for his own name to himself, applied for a declaration of invalidity in 2016 on the ground that Moreira was acting in bad faith. Whilst there is no simple test for establishing bad faith, an overall assessment should be made, taking all relevant factors of the case into account, including similarity, knowledge and intention. Back in 2012 when Moreira applied for the mark, Neymar was still in Brazil but was known as a rising star in the game and was bought by Barcelona F.C. for £70 million less than a year later. Moreira claimed that when he applied for the mark in 2012 he had no idea who Neymar was and simply chose the word based on its phonetic sound.
Whilst there was no evidence to prove Moreira had known about Neymar’s existence in 2012, his claim to ignorance was nevertheless given short shrift by the court, as it transpired that on the same day as the NEYMAR application was filed, Mr Moreira also applied for registration of IKER CASILLAS – also a famous footballer.
It is hoped that now, Neymar can focus on attacking on the pitch rather than defending in court.