Neymar prevails over “NEYMAR™”: Can a footballer’s name be registered as a trademark?
It is worth questioning to what extent it is lawful, for those who register a brand, to use a name and visibility that are not their own, doing business with them.
Some media personalities in the past have realized the impact and potential that their name have. That is precisely why Cristiano Ronaldo (CR7) and Lionel Messi (The Messi Store) created their own brand.
Will Neymar be part of this squad? The famous footballer got involved in a very illustrative case, which happen to be a good baseline to answer to the question raised above.
The case:
Carlos Moreira, a Portuguese citizen residing in Guimarães, Portugal, submitted on December 17, 2012, at the European Union Intellectual Property Institute (EUIPO), the application for registration of “NEYMAR™”, as a Union trademark, for articles of clothing, footwear and headgear, in which Moreira succeeded.
The brand was registered On April 12, 2013, about two months before the promising footballer – Neymar da Silva Santos Júnior – was transferred from Santos FC to FC Barcelona.
The registration of the trademark made the brand valid and effective throughout the territory of the European Union, recognizing the Portuguese citizen as the owner of the trademark for almost three years.
Nonetheless, the story turned around on February 11, 2016, when the Brazilian player filed to the Court of Justice of the European Union (CJEU) a request to declare the registration of the trademark for all designated products null.
It is worthy to mention the fact that player signed a contract for the exploitation of image rights in 2014 with the NIKE brand, which might have reinforced the need to take legal actions in order to safeguard the identity of the brand of the products marketed under the brand name “Neymar Jr. Nike”.
Analyzing the present case: did Moreira failed with article 52º, nº 1, b) of Regulation (EC) nº 207/2009, of February 26, 2009 [repealed by Regulation (EU) 2017/1001 of the European Parliament and Council of 14 June 2017]?
According to the aforementioned precept, “the nullity of the community trademark is declared […] whenever the trademark owner has not acted in good faith in the act of filing the trademark application”.
The case law Copernicus-Trademarks v. EUIPO — Maquet (LUCEO), T‑82/14, EU:T:2016:396, added that the concept of “good faith” “relates to a subjective motivation of the person submitting a trademark application, namely, a dishonest intention or another cause of damage. It implies a behavior that departs from the recognized principles of an ethical behavior or honest uses in industrial or commercial matters”.
The decision:
Since what is at stake is a subjective factor, which should be determined on a case-by-case basis, the Court of Justice of the European Union (CJUE) concluded that the registration of a trademark with the name of someone with fame is, in itself, indicative of bad faith. Thus, it cannot pass for the defendant to claim that the sportsman, at the time of the registration, was not yet known in Europe and that, despite of being aware of his existence, he was unaware that he was a rising star in football.
The Court countered that Neymar was already a publicly recognized person, namely because of the results obtained with the Brazilian national team, having been the subject of a wide media coverage in Europe between 2009 and 2012, namely in France, Spain and the United Kingdom.
Regardless, the trademark applicant continued alleging that he chose the name “NEYMAR” “solely and exclusively because of the phonetics of the word and not because of the image of the intervener”.
Once again, the CJUE rejected the argument that the name was nothing but a coincidence, never aiming to exploit the footballer’s fame, especially taking into consideration that on the same day of the initial registration, the Portuguese submitted a request for the brand “IKER CASILLAS”, at the time captain of Real Madrid, transferred to FC Porto in 2015!
The judges concluded, then, that “the applicant had more than a little knowledge about the world of football”.
Consequently, on November 7, 2016, EUIPO granted the request of the Brazilian footballer, which led the Portuguese businessman to file an appeal on January 11, 2017 against that decision.
However, the court of appeal also rejected the Portuguese businessman’s claim, considering to be the intention of the trademark applicant to unlawfully benefit from the footballer’s reputation in order to obtain financial advantages.
The appeal sentence came about a month after the Brazilian was registered for posterity with what was, to date, the most expensive transfer in world football – from FC Barcelona to Paris Saint-Germain FC by €222 million euros, which supports the thesis that the footballer Neymar, at the time of the registration of the brand, was already recognized internationally, conquering the attention of major European football clubs for future recruitments.Indeed “NEYMAR™” saw a red card!
