The EUIPO Board of Appeal has declared the validity of a trademark containing the well known work of the graffiti artist Banksy ‘Laugh Now But One Day We’ll Be In Charge’, having deemed that it was not registered in bad faith.
In recent years, the EUIPO Cancellation Division has decided to invalidate several trademarks by the famous graffiti artist Banksy on the basis that they were registered in bad faith (article 59.1b) of the European Union Trademark Regulation–EUTMR). In fact, in a previous IP Blog post, we commented on the invalidity declaration on grounds of bad faith of the Flower Thrower by Banksy, the most enigmatic of street artists.
However, Banksy’s luck seems to have changed as recently the EUIPO Appeals Board has revoked one of those decisions (see here), declaring the validity of the trademark containing the artist’s work depicting one of his characteristic monkeys with an empty sign:
In contrast to the sign registered as a trademark, in the artist’s graffiti of 2002 the sign reads Laugh Now But One Day We’ll Be In Charge. The trademark was registered in classes 9, 16, 25, 28 and 41 of the International Nice Classification, on June 8 2019 in the name of Pest Control Office, the company that acts as Banksy’s legal representative, so that he can continue to preserve his anonymity. A few months later, Full Colour Black Ltd. filed a request for a declaration of invalidity in all classes.
On May 18 2021 the EUIPO declared the EUTM to be invalid basically because it considered that at the time of filing the trademark, the owner did not genuinely intend to use the image as a mark, that is, to distinguish the commercial origin of goods and services. It contended that the registration sought only to circumvent copyright provisions In particular, the fact that any enforcement initiatives would require the author to disclose his identity, thus waiving his preciously guarded anonymity. As a result, registration of the trademark in question was considered inconsistent with honest practices and therefore, filed in bad faith.
The EUIPO Board of Appeals reversed the decision, essentially on the following grounds:
- Firstly it analyzes the grounds for invalidity alleged by Full Colour Black Ltd., based on the lack of distinctive character of the sign and because it is descriptive of the goods and services covered (article 59.1a) of the EUTMR in respect of articles 7.1b) and 7.1c) of that text), as these were not examined by the Cancellation Division. The Board of Appeals recalls that the same work can be protected simultaneously by copyright and as indicator of the origin of goods and services in the market through trademark registration. It concludes that the trademark has distinctive character and is not descriptive. It holds that Full Colour Black Ltd. failed to convincingly explain why it considered that the trademark was not distinctive or descriptive of the goods and services it covered, simply confining their argument to the fact that the sign is decorative. Furthermore, the fact that the public recognized the work of art does not detract in any way from the sign being perceived as an indication of commercial origin.
- It also declares that the trademark was not registered in bad faith because:
- The fact that the image contained in the trademark was made available to the public beforehand as a work of graffiti art and that Banksy would have allowed it to be used for non-commercial purposes does not mean that there had never been any intention to use the sign as a trademark. This conclusion is not altered by the fact that some entities had used the sign for commercial purposes – in contravention of what was expressly permitted by Banksy on his website – and had incorporated it in their merchandising.
- It is irrelevant that Banksy may have expressed his critical view of copyright, for example, stating that “copyright is for losers”- Expressing personal opinions is a fundamental right, and, in any case, what is relevant is that it has not been demonstrated that this statement was proof that there was no genuine intention to use the trademark, but it simply advocated avoiding the inconvenient aspects of copyright.
- Finally, the Board holds that there is no requirement to use the mark prior to registration. The proprietor of a EUTMR has a period of 5 years from the date of registration (a term that expires in June 2024) within which to start using the trademark.
This decision shows once again how difficult it is to invalidate a trademark on grounds of bad faith. It is presumed that a registration is made in good faith. In order to demolish this presumption in an invalidity procedure, it is essential to provide conclusive evidence.
