NEYMAR FOOTWEAR | Decision 0012515


Mr Neymar da Silva Santos Júnior, Carrer Doctor Joaquin Albarran, nº 28, Pedralbes, 08034 Barcelona, Spain (applicant), represented by Cabinet Lavoix, 2, place d’ Estienne d’Orves, 75441 Paris cedex 09, France (professional representative)

a g a i n s t

Carlos Moreira, Rua da Lapinha, n.º 134, Calvos, 4810-605 Guimarães, Portugal (EUTM proprietor) represented by Tiago Faria, Rua Sto. Estêvão, n.º 43 Sto. estêvão (Barrosas), 4620-615 Lousada, Portugal  (professional representative).

On 17/01/2017, the Cancellation Division takes the following


1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 13 002 894 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.


The applicant filed an application for a declaration of invalidity against European Union trade mark No 13 002 894 ‘’ (figurative mark), filed on 17/06/2014 and registered on 02/03/2015 (the EUTM). The request is directed against all the goods covered by the EUTM, namely clothing, footwear, headgear in Class 25.

The application is based on the right to the name ‘NEYMAR’ claimed to be protected in the European Union, in relation to which the applicant invoked Article 53(2)(a) EUTMR.

The applicant also invoked Article 52(1)(b) EUTMR, namely that the EUTM proprietor was acting in bad faith when filing the trade mark application.


The applicant is a Brazilian football player, internationally known under his first name ‘NEYMAR’ that quickly became his pseudonym. His notoriety was built by the significant refusals to join the West Ham and Chelsea teams, by the victory of his team during the San Paulo championship (the most prestigious in Brazil), by his unheard of technical prowess reminiscent of the world champion Pelé as well as his inclusion in the Brazilian national team when he was barely 18 years old. It is further shown that the applicant set up the company NEYMAR SPORT E MARKETING S/S LIMITADA and gave it a license to develop and commercialise goods on which the pseudonym ‘NEYMAR’ appears and also to use said pseudonym in the market and for communication in the European Union and worldwide.

As regards the invalidity ground based on Article 53(2)(a) EUTMR, the applicant essentially claims that the football player Neymar da Silva Santos Júnior became famous in the European Union under his first name ‘NEYMAR’, prior to the filing of the contested EUTM. As a consequence, his notorious pseudonym ‘NEYMAR’ constitutes a prior right that can be meritoriously asserted against the subsequent registration of the contested mark according to the French national law. In addition, he is also entitled under the Spanish national law to prohibit the use by the EUTM proprietor of his pseudonym ‘NEYMAR’. The applicant further provides details on the conditions to be fulfilled under the French and Spanish national laws and why they are met in the case at hand.

As regards the invalidity ground based on bad faith, the applicant contends that the football player ‘NEYMAR’ was already famous in the European Union before June 2014 so that the proprietor could not be unaware of the rights he infringed. NEYMAR was well-known and had an established reputation by 2014. His fame became more important when he was transferred to FC Barcelona, considered by many the best football club in the world. Moreover the name ‘NEYMAR’ is not common in the EU. In the applicant’s view, the proprietor did not pursue a legitimate interest when applying for the contested mark and his intention to harm can be inferred from his knowledge. The intention of the EUTM proprietor was in fact to deprive the footballer and his company of a sign that was necessary for the continuation of his activities. The proprietor never tried to exploit the contested EUTM. His malicious intent can also be inferred from the proprietor’s wish to take advantage of NEYMAR’s image and names through the filing of three other EUTMs for the signs ‘NEYMAR’, ‘NJR’ and ‘NJR NEYMAR JR’. The aim of the proprietor was thus to prevent NEYMAR and his company from using his name to commercialise the goods that are usually commercialised by footballers. The contested EUTM is registered for clothing, footwear, headgear. These goods include football shoes, sportswear, hats and caps that are usually worn and marketed by football players, who commonly register trade marks with their names to designate goods in Class 25. The applicant further explains that the proprietor has also registered other European Union trade marks that use the name of another footballer (Iker Casillas).

In support of its observations, the applicant filed the following evidence:

  • Annex 1: Selection of 25 articles from the specialised and general French online press and print media (,,,, Le Parisien,, Le Progrès-Lyon, Sport Foot Magazine, Aujourd’hui en France,,, Le Progrès, L’Equipe and France Football), published between March 2009 and November 2014 (documents in French and English translations). The evidence gives information about the professional activity and career of Neymar and about his personal life, shows pictures of the football player and contains various references to the fame he acquired. Some quotations from the articles are as follows:
  • A young striker at Santos, Neymar, 17, is of close interest for his compatriot Lenoardo. Reading the Italian press, the AC Milano sports manager would like to enrol the young star […]. (, ‘Neymar and Keirrison are on Milan AC’s blocks’, 29/03/2009)
  • Neymar, a young (18 years old) Brazilian prodigy of FC Santos, whom the King Pelé praises [..]. (Le Parisien, ‘Neymar will not make Algeria dream’, 26/03/2010)
  • Brazil: Neymar da Silva Santo Junior (18 years old) is of interest for Chelsea, Milano and Real Madrid. For the 98th birthday of Santos, he scored five goals in Guarani in Cup. Robinho, came back to revive, is no longer Pelé’s club star. It’s Neymar who receives not-so-original nicknames. Like Menino de Ouro (kid in gold like Maradona) … or the Brazilian Messi. (Sport Foot Magazine, ‘Cosmos America’, 04/05/2010)
  • The Brazilian legend Pelé advises the young Neymar to refuse Chelsea’s advances to stay in Santos. Pelé, who has nearly spent all his career in the Santos club, does not wish to see the young prodigy Neymar leave. (, ‘Pelé holds back Neymar’, 15/08/2010)
  • Still, the nugget, the ‘fuoriclass’, the real high class, is in Brazil, as always [..]. Warned last spring by one of our colleagues, based in Sao Paulo, we knew that in Santos, lifelong Pelé’s club, grew the one who, according to the ancients of this historical club, will be his equal one day. Neymar, 18 years old could have illuminated the World Cup in South Africa, as his renowned elder did in Sweden in 1958. For this, it would have needed that Dunga, the coach, be sensible to this pure talent and yields to the pressure of the whole Brazil asking him to bring him along. (L’Équipe mag, ‘Every summer, it’s the same thing. And it’s rather nice. Anonymous come…’, 21/08/2010)
  • Damiao, Neymar and Oscar were huge […]. Damiao saw the Korean goal-keeper push back two of his shots. The international’s striker was then more successful since he stroke a double following two actions started by a great Neymar. (L’É, ‘Brazil right on time’, 07/08/2012)
  • ‘Neymar belongs to Santos until 2014’, insisted Zubizarreta at the Canal+ Spain’s micro, while he was asked about the truth of the Catalan daily’s information that affirmed that Barça had already transferred a deposit of 10 million euros to ensure the recruitment of the Brazilian pearl in June 2013. (L’É, ‘Foot-Spain- Barça: Zubizarreta refutes for Neymar’, 28/10/2012)
  • Coveted by Real Madrid and FC Barcelona, Neymar finally chose to join the Catalan club. […] Might as well said that FC Barcelona was ready to spend without limits in order to lure to its club the new favourite of the world of football. (, ‘Neymar: FC Barcelona spends 300 000 Euros to please him’, 08/10/2014)
  • An unbeatable record of precocity. […] A formidable efficiency during the major competition. Despite his age and the hopes that weight on his shoulders, the young boss of the not so brilliant Seleçao, Neymar has never disappointed during the major international competitions. […] during the Copa de America, in 2011, while he was only 19 years old […] he still stroke two goals in four games. Two years later, he was elected the best player of the Confederations Cup. (, ‘What are Neymar’s 40 goals worth?’, 14/10/2014)

The same annex further includes printouts from dated 01/02/2016 in relation to Google searches for the terms ‘NJR football’ and ‘NJR’. The results retrieved for the term ‘NJR football’ include pictures of the football player and references to ‘Neymar football boots, shirts, shorts’ available at Nike Store UK, ‘NJR’ the new brand logo for Neymar ‘the Brazilian superstar set to become the endorser of his own brand’, ‘Neymar and football’ on Pinterest.

  • Annex 2: Screenshots from Téléfoot and showing recorded videos in relation to Neymar dated 05/12/2010 and 16/04/2010, referring to Neymar as ‘the Brazilian phenomenon from Santos’, ‘an outstanding dribbler and striker’, ‘young prodigy’, ‘one of the most coveted player in the world’ (documents in French and English translation).

  • Annex 3: Selection of 25 articles from the specialised and general Spanish online press and print media (El País, Mundo, Marca, As, ABC and El Mundo), published between January 2006 and July 2011 (documents in Spanish and English translations). The evidence reports on Neymar’s professional activities and personal life, shows pictures of the football player and provides comments on the rapid rise to popularity and the recognition he attained, such as for example:
  • From Brazil it is said that Valencia is interested in signing up Neymar, a striker from Santos, 13 years old. It’s one of the Brazilian football promises, who is distinguished by his great ability. […] Ribeiro thinks about moving Neymar with his parents, […] before Santos cannot do anything about it apart from being sorry about the ‘escape’ to Europe of one of the football current pearls. (Mundo, ‘A 13-year-old Brazilian from Santos of interest’, 03/01/2006)
  • The new young Santos star has attracted the interest of three Spanish clubs […]. However, Neymar is only 14 years old and to sign a professional contract he must be 16. In Brazil, they praise his qualities and they think that he could be the next Messi in a few years. (Mundo, ‘El Atletico on Neymar’s steps’, 18/02/2006)
  • While Ronaldo (Corinthians) fights to resuscitate a third time like a Phoenix, Brazil celebrates the birth of a new star: Neymar […]. (Marca, ‘The ‘new Robinho’ already strikes’, 20/03/2008)
  • Pelé has claimed that Neymar, the young player of Santos, can become better than him and emphasised that he could be his heir. […] Neymar, also called the new Robinho, is only 17 and is already celebrated in Brazil for his goals and football. (Marca, ‘Pelé names a former Real Madrid’s reserve player his heir’, 26/03/2009)
  • One of the Brazilian football’s new pearls is named Neymar and, of course, European major clubs follow him. First are Barcelona and Milan. (Mundo, ’20 million for Neymar (17 years old)’, 04/04/2009)
  • Santos has already presented his new generation of aces. […] the young pearls Neymar and […] have become the sensation of the Brazilian football. (Mundo, ‘The heirs of Diego and Robinho’, 08/05/2010)
  • The striker who marvels his compatriots for his quality and his varied repertoire of incredible dribbles […]. The 18-year-old youngster excelled with his brilliant football in the regional championship of Sao Paolo at the beginning of the year […]. (El Mundo, ‘Neymar triggers the polemic because of his insolence’, 17/09/2010)
  • Neymar celebrates one of the two consecutive goals against Scotland. At 19 years old, the main Brazilian hope for the World Cup 2014. His talent is incalculable and is worth to be compared to Pelé or Garrincha. […] Last Sunday, Brazil defeated Scotland thanks to two goals of a boy who’s barely 19 and who’s said to be the future start of the eight-time-world champion. Neymar da Silva Santos Junior, better known as Neymar is possibly the most exquisite pearl that the prolific Brazilian source has given recently. His talent, rapidity, dribble, his use of both legs and achievement in the last meters explain the comparisons with the major myths of the history of football. In Brazil everyone calls Neymar the Pelé of the XXI century. (El Mundo, ‘Neymar: the leader of the generation 2014’, 28/03/2011)
  • Defined by goals, the forwards can be placed into the elite or can be placed down into catacombs without remission. […] Neymar said last night, once again, that he is a great football player […]. Neymar chase a pass inside the penalty area and made a score. It was a goal and the beginning of his history, perhaps in Madrid or in another colossus of Europe. ‘El Santos’ won 2-1, he reproduced the end of 1962 and Neymar made Pele. He was crowned. (El País, ‘Neymar is the new king’, 23/06/2011).


  • Annex 4: Selection of 23 articles from Mirror Football,,,,,,,,, published between January 2010 and July 2014 and giving information on Neymar’s activity and his fame and success. The evidence contains comments on ‘his fame and notoriety on the world stage’ and ‘brilliant performance’ and refers to Neymar as a ‘technical marvel, a wizard with magical feet’, ‘Brazil wonderkid’, ‘Brazil’s talisman’, ‘young wunderkid’, ‘superstar’ or the ‘new Pelé’.

The same annex further includes: (i) printouts from reporting on Neymar JR’s partnership with Police marks and announcing Neymar as Police ‘Global Eyewear Brand Ambassador’  and (ii) printouts from dated 20/01/2016 in relation to Google searches for the term ‘neymar’; the results displayed relate exclusively to the football player and are dated before 17/12/2012 (for example ‘Brazilian soccer star Neymar’, 24/08/2012, ‘Pele says Neymar is better than Lionel Messi’, 12/04/2012).

  • Annex 5: Screenshots from,, and in relation to Neymar’s social networks. The evidence shows, inter alia, pictures of the football player and the number of followers (20.9M on twitter and 40.8m on Instagram).

  • Annex 6: Printouts from dated January 2016 in relation to European Union trade marks registered by other football players (EUTMs No 6 353 131 ‘LIONEL MESSI’, No 11 770 641 ‘GARETH BALE’ and No 8 407 793 ‘BENZEMA’).

  • Annex 7: Printouts from dated 01/02/2016 showing the results of Googles searches on the terms ‘carlos moreira guimaraes’, ‘carlos moreira neymar njr’ and ‘carlos moreira neymar’. The same annex further contains screenshots from dated 01/02/2016 in relation to a search for the profile of persons called ‘Carlos Moreira’ and displaying a number of ten profiles none having the EUTM proprietor’s identification data.

  • Annex 8: Copy of a decision issued on 02/07/2015 by the Spanish Patent and Trade mark Office and refusing the trade mark application for the sign ‘NJR’ in Classes 25 and 28 ‘because of identity, same scope of application and risk of association and misappropriation of the reputation of the opposing trade mark’ (document in Spanish and English translation).

The EUTM proprietor submitted observations in reply on 07/06/2016. It refers to, inter alia, different earlier rights and grounds than the ones claimed in the present cancellation proceedings (the well-known mark ‘NJR’ in Brazil and the well-known mark ‘for the name ‘NEYMAR’ in Brazil and Article 8(2) in conjunction with Article 8(1)(a) and (b) EUTMR and Article 8(4) EUTMR respectively) and requests the rejection of the application insofar as based on a well-known mark because the applicant failed to demonstrate the existence, validity and scope of protection of such mark. He also puts forward that there is no likelihood of confusion on the part of the public as the differences between the signs overshadow the similarity.  

In its final reply of 11/08/2016, the applicant rebuts the proprietor’s arguments and states in the main that: (i) the invalidity action is based on the right to the pseudonym ‘NEYMAR’ pursuant to Article 53(2)(a) EUTMR and not on a well-known mark in accordance with Article 6bis of the Paris Convention and (ii) in any case, the proprietor failed to submit any arguments showing that he was not acting in bad faith at the moment of filing of the contested EUTM.

On 29/11/2016, the Office informed the parties that the adversarial part of the proceedings was closed and that a decision on the substance would be taken on the basis of the evidence before it.


General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

Reference is made to the facts and evidence set out above in the ‘Summary of the Parties’ Arguments’ section.

Assessment of bad faith

The documentation submitted by the invalidity applicant demonstrates beyond dispute that Mr Neymar da Silva Santos Júnior is a famous professional football player of Brazilian origin, widely known in, at least, several countries of the European Union and in Brazil under his first name ‘Neymar’. The press articles submitted as Annexes 1, 3 and 4 extensively report on his professional activity and career (and some also on his personal life) and contain numerous references to his success and fame. Moreover, the expressions used in the media to refer to him (see above under the ‘Summary of the Parties Arguments’ section) confirm that the reputation acquired is to such an extent that the name ‘Neymar’ was known or must have been known in the relevant territory prior to the filing date of the contested EUTM, at the very least in the relevant sector concerned.

Admittedly there is no evidence on file that the EUTM proprietor had actual knowledge about the use of the name ‘Neymar’ or that there was any direct or indirect relation or contact between the parties. However, it is the opinion of the Cancellation Division that the facts and evidence submitted in the case at hand allow for the presumption that the EUTM proprietor must have known about the use of the name ‘Neymar’, prior to June 2014. As already explained and as supported by the evidence, the activity of Mr Neymar as a professional football player garnered much attention and praise and his name has been heavily featured in articles from both the specialised and general press in the EU at least since 2006.

However, the fact that the EUTM proprietor must have known of the use of the sign is not sufficient, in itself, for a finding of bad faith (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 40). In order to determine whether there was bad faith, the central element to be considered is the EUTM proprietor’s intention at the time of filing. This is a subjective factor which has to be determined by reference to the objective circumstances of the case. As mentioned by the Advocate General Sharpston, ‘bad faith relates to a subjective motivation on the part of the trade mark applicant – a dishonest intention or other ‘sinister motive’ – which will none the less normally be established by reference to objective criteria; it involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against such standards’ (Opinion of the Advocate General, 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).

The contested EUTM in the present case is the figurative mark ‘’, registered for clothing, footwear, headgear in Class 25. It reproduces as the central verbal element, the famous name of the footballer, which is moreover quite an uncommon and unusual name in the relevant territory and which appears to be exclusively associated with him. The inclusion in the mark of a figurative element highly evocative of a football club insignia can only further increase the connection with Mr Neymar. As for the presence of the additional verbal element ‘FOOTWEAR’, not only that such word is non distinctive at least for part of the goods, but given its position and size, it is barely legible. As such, it will not be noticeable at first sight and it is highly likely to be disregarded by consumers, whose attention will be instead attracted and retained by the verbal element ‘NEYMAR’. Regarding the goods covered by the contested mark, it is true that, except for a result retrieved by a Google search (see above under Annex 1), there is no documentation on file showing that the applicant is actually using his name in relation to such goods. However, it is a common practice for famous footballers to license their names to manufacturers of sport apparel or to even develop their own lines of clothing. Furthermore, account must be taken of the fact that in the particular field, clothing, footwear and headgear are amongst the most common merchandise articles that generate a high turnover. As such the relevant consumers may regard the goods of the contested EUTM as somehow linked to the famous football player.

In this context, the Cancellation Division fails to see which could have been the commercial logic on the part of the EUTM proprietor when applying for the contested mark other than a deliberate intention to create an association with the famous name of the football player and thus to piggyback off of its attractive force and/or to even prevent him and/or the applicant from entering the market.

The EUTM proprietor provided no explanations as to why out of all the names he could have chosen to register as a trade mark (including his own name), he happened to select the rare and well-known first name of a famous professional football player. Nor did the proprietor comment on the use made of the contested EUTM or clarify why he also filed without Mr Neymar’s consent for the EUTMs No 11 432 044 ‘NEYMAR’, No 13 334 503 ‘NJR NEYMAR JR’ and No 13 533 261 ‘NJR’ (all subject to cancellation proceedings).

The EUTM proprietor remained equally silent as to why he registered three other European Union trade marks consisting of/including the name of Iker Casillas, another famous football player, covering the same goods in Class 25. Admittedly, the mere circumstance of having filed these does not prove, as such, the EUTM proprietor’s bad faith. However, the filing of other marks in dubious circumstances or appearing as a misappropriation of other traders’ goodwill may give a strong indication of the intentions of the applicant of a certain mark (see by analogy, 25/02/013, R 2448/2010-4, AERMACCHI MILANO, § 22). In the circumstances and in view of the evidence submitted by the applicant, the burden of proof has effectively shifted from the applicant to the proprietor in the sense that the latter should have been able to safely explain and demonstrate the reasons for such a situation.

‘There is no simple, decisive test for establishing whether a trade mark application was submitted in bad faith’ (see Opinion of the Advocate General above cited, § 75). In the present case, in an overall assessment of all the facts and evidence, the Cancellation Division considers it reasonable to assume that when filing the contested EUTM, the proprietor’s only aim was to lay his hands on the well-known name ‘NEYMAR’ and to compete unfairly by taking advantage of the renown it attained. Such an intention can never be considered compatible with accepted standards of honest or ethical conduct or in pursuit of a legitimate objective. In filing and registering the contested EUTM, the proprietor has effectively put a potential obstacle to the applicant in his business activities on the European Union market. Indeed, it has already been established that it is usual for famous football players to make merchandising items, such as goods in Class 25, available on the market.  As such the objective circumstances of the evidence and facts combined with the specific circumstances, lead to a conclusion of bad faith. Moreover the EUTM proprietor has not submitted any arguments or evidence that would allow the Cancellation Division to reach a different conclusion. Indeed, the two pages filed by the proprietor on 07/06/2016, apart from containing references to grounds and rights which do not concern the present proceedings (such as Article 8(4) EUTMR and a well-known Brazilian mark ‘NJR’), are nothing but a ‘compilation’ of some standard arguments on the likelihood of confusion and the impact of the visual similarity of marks when the goods concerned are clothing.

Therefore, it must be found that the EUTM proprietor was acting in bad faith.


In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods.

Given that the application for a declaration of invalidity is entirely successful under Article 52(1)(b) EUTMR, it is not necessary to examine the remaining earlier rights and grounds on which the application is also based.


According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, he must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Vanessa PAGE

Oana-Alina STURZA


According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

Start your Trademark Study today!

This report is optional but highly recommended.
Before filing your trademark, it is important that you evaluate possible obstacles that may arise during the registration process. Our Trademark Comprehensive Study will not only list similar trademarks {graphic/phonetic} that may conflict with yours, but also give you an Attorney's opinion about registration possibilities.