THE EU GENERAL COURT CONFIRMS THE INVALIDITY OF THE TRADEMARK ‘NEYMAR’ REGISTERED BY A THIRD PARTY TO THE FAMOUS FOOTBALL PLAYER

20/06/2019

On May 14, 2019, the General Court of the European Union (Case T-795/17) dismissed the appeal brought by Mr. Carlos Moreira against the decision of EUIPO upholding the application for a declaration of invalidity of the trademark “Neymar”, brought by the football player Neymar Da Silva Santos Júnior (Neymar).

 

In 2013, Mr. Moreira registered the European word trademark ‘NEYMAR’ for clothing, footwear and headgear. A few years later, the well-known football player Neymar filed an application for invalidity of the trademark on the ground of bad faith, pursuant to Article 59(1)(B) of Regulation 2017/1001, which the Cancellation Division of EUIPO granted in 2016. That decision, challenged by Mr. Moreira, was further confirmed by the second Board of Appeal of EUIPO, which ruled on the appeal in 2017.

Mr. Moreira therefore brought an action before the General Court of the European Union for annulment of the EUIPO’s decision to appeal on several grounds. Although he was aware of the existence of the player at the time of the application for the trademark ‘NEYMAR’, Mr. Moreira claimed that he had not been aware of his international reputation, since the player in question had not yet arrived in Europe; in his view, purely phonetic reasons had led him to choose the sign ‘NEYMAR’.

According to the applicant, bad faith could only have been recognized in the registration of the trademark if the procedure had continued despite the opposition of the footballer, which was not the case here. Moreover, when the application was filed, the name NEYMAR was neither protected as a trademark nor used as such.

The grounds put forward by the applicant were not considered convincing by the EU General Court, which rejected the appeal on May 14, 2019 and upheld the decision of EUIPO declaring the trademark ‘NEYMAR’ invalid.

In first place, the evidence presented by Neymar in the proceedings before EUIPO shows that the Brazilian football player was known internationally by his given name, and that he was famous in Europe, for his performance with the Brazilian national team, several years before his transfer to FC Barcelona in 2013 and, in particular, before the date of filing of the trademark application.

Secondly, the applicant Mr. Moreira had a qualified knowledge of the world of football, having also filed, on the same day, a trademark application for the sign “IKER CASILLAS”, which is the name of another famous Spanish football player. Given the applicant’s knowledge of the world of football, and given the coincidence between the trade mark ‘Neymar’ and the name of the football player, it is impossible that Mr. Moreira was not aware of the existence of the football player at the time of filing the application for registration of the contested trademark.


LEADERS LEAGUE 2019: LGV CLASSIFIED AS “LEADING” LAW FIRM FOR INTELLECTUAL PROPERTY AND TMT AND AS A LAW FIRM OF EXCELLENCE IN LITIGATION IN THE FIELD OF TRADEMARKS AND PATENTS

29/05/2019

LGV confirms its position as a leading law firm in the field of copyright and Technologies, internet & telecommunications category, and as a law firm of excellence in litigation in the field of trademarks and patents.

 

Leaders League, the French company that deals with rating professional firms in various national contexts, considers the high quality of service offered by the firm in relation to copyright and TMT, naming, for the second consecutive year, LGV as the leading law firm in the Intellectual Property category with lawyers Simona Lavagnini and Margherita Stucchi, as well as a firm of excellence for litigation on trademarks and patents, with lawyers Luigi Goglia, Simona Lavagnini and Tankred Thiem.

The guide updated to 2019, takes into account the high quality of the service offered by the firm in relation to copyright and new technologies, as well as the activity carried out by LGV as a litigator in the field of trademarks and patents.

LGV, once again, has achieved a high position in a prestigious legal ranking, thus confirming the presence and influence of the firm in the international context and its role of relevance in an increasingly competitive global market.

For more details seehttps://www.leadersleague.com/en/company-directory/lgv-avvocati/italy/technologies-internet-telecommunications-1?routingLanguage=en


SIMONA LAVAGNINI AWARDED AS “COPYRIGHT LAWYER OF THE YEAR” AT LEGALCOMMUNITY IP & TMT AWARDS 2019

14/05/2019

Simona Lavagnini, founding partner of LGV Avvocati, once again confirmed as a top-level professional in copyright law.

 

Legal Community, which since several years is active in rating law firms and individual professionals on the Italian scene, has awarded the prize of “Copyright Lawyer of the Year” to Simona Lavagnini.
The ceremony took place on May 13, 2019 at the event that Legal Community dedicates to the IP & TMT Awards, bringing together the most prominent professionals in the field of intellectual property law.

Mrs. Lavagnini has achieved such important recognition thanks to her solid skills in copyright, which allowed her to distinguish among the Italian professionals, especially in the field of new technologies. Simona Lavagnini is particularly appreciated by her clients for her concrete and innovative action, as well as for the creativity used in facing challenges and new legal issues.

Lavagnini’s prize at the IP & TMT awards, especially in relation to a constantly developing field such as copyright in new technologies, is paradigmatic of the expertise and specialization of LGV Avvocati, which has a dedicated team of professionals all active and competent in the field of copyright and new technologies. In addition, this recognition further strengthens the presence and influence of LGV Avvocati in the field of copyright and IP intangible asset protection, giving the firm an important role in an increasingly competitive market.


AMERICAN GIANT AIR BNB INC FAILED THE OPPOSITION AGAINST THE TRADEMARK APPLICATION ‘CIAO BNB

08/05/2019

Ciaomanager S.r.l., a small company from northern Italy, filed in 2017 a EU word trademark application for the sign ‘Ciaobnb’ for products in classes 9, 35, 39, 41, 42 and 43. Airbnb Inc. opposed the application on the basis of its earlier trademarks ‘Airbnb’, but EUIPO rejected the opposition.

 

By decision of April 9, 2019, the Opposition Division of EUIPO rejected the opposition filed by Airbnb Inc in 2016 against the EU trademark application ‘Ciaobnb’, on grounds of lack of likelihood of confusion with the earlier trademark ‘Airbnb’, registered for the same classes.

In assessing the similarity of the signs, EUIPO found the two signs to be different for many reasons.

In first place, EUIPO found that the word ‘BNB’ tends to be associated by consumers with the concept of “Bed&Breakfast”, that is to say, a small receptive structure offering overnight stay and breakfast. Part of the services brought by the opposition concern the management and administration of facilities that provide temporary accommodation through online platforms or software applications; consequently, a sufficient connection between the mentioned services and the type of accommodation evoked by the notion of ‘BNB’ exists.

The opposing party observed that it does not provide the typical ‘Bed & Breakfast’ services, but an online platform service for the publication of accommodation offers by users themselves. Unlike the opponent argued, the Office held that the comparison of the signs must be assessed against the goods and the services on which the opposition is based, but not the business activities for which the earlier trademark is actually used, or for which it may have acquired distinctiveness through use. The element ‘BNB’, therefore, appears to descriptive as it alludes to the type of products and services provided. The initial parts of both signs, respectively ‘AIR’ and ‘CIAO’, were considered sufficiently distinctive with respect to the goods and services requested, as well as different from each other. In addition, the consumer’s perception of word signs focuses on the first part of the sign, thus confirming the difference between the two.

With regards to the distinctive character of the earlier signs, the Office acknowledged that Air Bnb Inc. enjoys a consolidated position in the industry, as attested by the various independent sources produced as evidence in the proceedings. Therefore, the trademark ‘AirBnb’ acquired distinctiveness before the filing date of the contested trademark application. However, the acquired distinctiveness only concerns part of the goods/services opposed and therefore, with regards to the rest of the goods/services, the assessment rests on their distinctiveness per se.

In the light of all these considerations, the opposition was rejected.


LGV AVVOCATI PUBLISHES A CONTRIBUTION IN THE “LAW AND PRACTICE” SECTION OF THE GUIDE TO PATENT LITIGATION, YEAR 2019, OF CHAMBERS AND PARTNERS

12/03/2019

In the Guide to Patent Litigation 2019 of Chambers and Partners LGV, as a firm specializing in Intellectual Property, publishes a contribution on patent litigation.

 

Chambers and partners – the English company that deals with the rating of professional firms and individual professionals, both in Europe and globally – has published on its website, in the “Law and Practice” section of the Guide to Patent Litigation, year 2019, a contribution by attorneys Luigi Goglia, Brenda Villa and Tankred Thiem, established professionals in the practice of patent litigation https://practiceguides.chambers.com/practice-guides/patent-litigation-2019/italy/1-types-of-intellectual-property-rights-grant-procedure

The contribution reviews the forms of protection granted by the Italian legal system to inventions (patents for industrial inventions, utility models and know-how) and analyzes in detail the procedure for granting patents and utility models. It also deals – among other things – with matters relating to the time line of the procedure for granting such rights, the duration of intellectual property rights, the rights and obligations that arise for the holder of the intellectual property right and the means available in the event of refusal to grant the rights analysed.

The publication by the directory represents a further confirmation of the significant experience of LGV Avvocati in the field of patent litigation, an area in which the firm already has earned important recognition in the national as well as in international context and attributes to the firm a role of relevance, in an increasingly competitive global market.