GEEKCORE v GEEK STORE – Relying on unregistered trade mark rights
Wilson Gunn client AP & Co Limited has won its opposition case against Yellow Bulldog Limited.
The European General Court has recently upheld the decision that a Portuguese man acted in bad faith by trying to trademark the name of Neymar.
This dispute stretches back to December 2012 when Carlos Moreira filed an application for the EU word mark ‘NEYMAR’ at the European Union Intellectual Property Office. The trade mark was subsequently registered in April 2013, in respect of products in the categories of clothing, footwear and headgear.
In 2016, Neymar Da Silva Santos Jr. (Current PSG and Brazilian footballing superstar) applied for a declaration of invalidity of the word mark, one of the grounds being that the applicant had acted in bad faith.
Article 59(1)(b) EUTMR deems that an EU trade mark shall be declared invalid where the applicant has acted in bad faith when he filed the application.
A definition of the term ‘bad faith’ is not defined in current legislation. However, one way the Court has chosen to describe the concept of ‘bad faith’ is ‘conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices’.
In order to make an assessment on whether the owner had been acting in ‘bad faith’, all the relevant factors must be taken into account.
In 2016, the application for invalidity was upheld by the EUIPO cancellation division and after appeal, confirmed by the Second Board of Appeal in 2017.
However, Mr. Moreira disagreed with this ruling and further appealed to the EU General Court.
Mr. Moreira argued that at the time of filing the application, although he was aware of Neymar’s existence, the footballer was not yet known in Europe and he was not aware that the footballer was a rising star.
Moreover, Moreira disputed the fact that the Board of Appeal considered it likely that he would have known in 2012 that Neymar would have been transferred to an important European club, stating that it is usual that “promising young footballers end up not having the careers initially envisioned for them”.
Further, Moreira denied that his registration of the mark was made in order to exploit the footballer’s success, arguing instead that the word Neymar was chosen purely for phonetic reasons.
The EU General Court noted that the Board of Appeal righty put forward a portfolio of evidence demonstrating that Neymar was internationally known under his first name and was known in Europe in 2012, most notably due to his performances for the Brazilian national football team.
Moreover, the court confirmed that the Board of Appeal was right to point out that Mr. Moreira possessed more than a little knowledge of football, since he also filed a similar word mark to ‘IKER CASILLAS’ (the famous ex-Real Madrid goalkeeper) on the same day.
Having established that Mr. Moreira possessed more than a little knowledge of football, and the fact that the word mark is identical to the name under which the footballer had acquired international renown, the General Court rejected Mr. Moreira’s claims that the use of the name ‘Neymar’ was a mere coincidence and purely chosen for phonetic reasons.
The Court found that Mr. Moreira’s reasoning for choosing the word mark was not credible and that there is no convincing argument for the applicant’s application other than the desire to exploit the footballer’s renown.
This case highlights that bad faith is based on the applicant’s dishonest intention at the relevant date of filing the application. The conclusion that the applicant’s intention was dishonest lies in the fact that the court decided that “there is no explanation for the applicant’s application for registration of the contested mark other than the desire to exploit the intervener’s renown in order to benefit from it”.
If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.