On May 14 th 2019 the General Court issued a resolution on an action brought against the
decision of the EUIPO Board of Appeal dismissing the applicant’s plea to keep its trade mark
“NEYMAR” registered.
The case started in 2012 when the applicant filed a trade mark for registration which
contained the name of an international well-known football player called Neymar. The mark
was registered in 2013, and Neymar’s representatives filed an application for a declaration of
invalidity against the applicant’s trade mark, resulting on the Cancellation Division upholding
Neymar’s plea. Subsequently, the applicant tried to defend the registration before the Board
of Appeal, leading to another dismissal.
At the judicial stage, the General Court also dismissed the action on the grounds of bad faith
shown by the applicant during the registration of the EU trade mark “NEYMAR”. The concept
of bad faith is referred to in Article 52(1)(b) of Regulation No. 207/2009 (now Article 59(1)(b)
of Regulation 2017/1001), and settled case-law has set out several requirements in order to
plead so, inter alia: (i) the assessment of bad faith has to be taken into account at the time of
filing the application of registration for an UE trade mark (“the relevant date”), (ii) in the light
of the applicant’s intention, which consists of a subjective factor which must be determined
by reference to the objective circumstances of the particular case (judgement of 11 June 2009,
Chocoladefabriken Lindt & Sprüngli, C-529/07, EU:C:2009:361).
In view of the circumstances involving the present case, the Court considered as objective
factors the press and internet articles brought as evidence by the Neymar’s representatives to
demonstrate that the intervener (Neymar) had a global fame in the world of football by the
relevant date. Another objective element was the fact that the same applicant filed an application for registration of the word mark “IKER CASILLAS” on the same day the application for registration of the contested trade mark was filed. Those objective factors demonstrated that the applicant did know about the world of football in detail and specially the reputation of the intervener as a famous footballer.
In light of the foregoing, the General Court considered the applicant’s arguments were invalid
and dismissed the action as the bad faith was duly proven by means of objective evidence. It is
interesting, therefore, to bear in mind that when claiming bad faith, objective factors are needed to show the reality of such conduct in order to consider the existence of unlawful filing.
Authors
Miriam Santin, Lawyer
Riccardo Ciullo, Lawyer
decision of the EUIPO Board of Appeal dismissing the applicant’s plea to keep its trade mark
“NEYMAR” registered.
The case started in 2012 when the applicant filed a trade mark for registration which
contained the name of an international well-known football player called Neymar. The mark
was registered in 2013, and Neymar’s representatives filed an application for a declaration of
invalidity against the applicant’s trade mark, resulting on the Cancellation Division upholding
Neymar’s plea. Subsequently, the applicant tried to defend the registration before the Board
of Appeal, leading to another dismissal.
At the judicial stage, the General Court also dismissed the action on the grounds of bad faith
shown by the applicant during the registration of the EU trade mark “NEYMAR”. The concept
of bad faith is referred to in Article 52(1)(b) of Regulation No. 207/2009 (now Article 59(1)(b)
of Regulation 2017/1001), and settled case-law has set out several requirements in order to
plead so, inter alia: (i) the assessment of bad faith has to be taken into account at the time of
filing the application of registration for an UE trade mark (“the relevant date”), (ii) in the light
of the applicant’s intention, which consists of a subjective factor which must be determined
by reference to the objective circumstances of the particular case (judgement of 11 June 2009,
Chocoladefabriken Lindt & Sprüngli, C-529/07, EU:C:2009:361).
In view of the circumstances involving the present case, the Court considered as objective
factors the press and internet articles brought as evidence by the Neymar’s representatives to
demonstrate that the intervener (Neymar) had a global fame in the world of football by the
relevant date. Another objective element was the fact that the same applicant filed an application for registration of the word mark “IKER CASILLAS” on the same day the application for registration of the contested trade mark was filed. Those objective factors demonstrated that the applicant did know about the world of football in detail and specially the reputation of the intervener as a famous footballer.
In light of the foregoing, the General Court considered the applicant’s arguments were invalid
and dismissed the action as the bad faith was duly proven by means of objective evidence. It is
interesting, therefore, to bear in mind that when claiming bad faith, objective factors are needed to show the reality of such conduct in order to consider the existence of unlawful filing.
Authors
Miriam Santin, Lawyer
Riccardo Ciullo, Lawyer
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