Let not the Cancellation Division see your black and deep desires: (another) Banksy mark cancelled by EUIPO due to bad faith

Monkey business?

The anonymous graffiti artist known as Banksy is no stranger to trade mark wrangling, with this week’s cancellation decision by the European Union Intellectual Property Office’s Cancellation Division following hot on the heels of similar proceedings last September, concerning the work 'Flower Thrower' (covered by the IPKat here). 

The latest decision concerns his famous – indeed, “arguably the most famous and iconic of his works” (p. 3 of the decision) – ‘Laugh Now But One Day We’ll Be In Charge’, which depicts a monkey wearing a sandwich board adorned with the titular slogan.

Background

Banksy first created a version of the work in 2002 on the commission of a Brighton nightclub, after which it came to prominence, adorning a variety of goods. He then authorised his handling service, Pest Control, to file an EU trade mark application in November 2018 for a figurative trade mark, depicting the monkey with a blank sign around its neck, across classes 9, 16, 25, 28, and 41.

With no opposition having been voiced by any third party, the EUIPO registered it in June 2019. Subsequently, however, in November 2019, Full Colour Black, a greetings card company specialising in street art and graffiti images, filed an application for a declaration of invalidity on the grounds of bad faith (Art. 59(1)(b) EUTMR) and lack of distinctive character (Art. 59(1)(a) EUTMR read in conjunction with Articles 7(1)(b) and (c) EUTMR).

Arguments

    Full Colour Black argued that the mark had served as decoration for a wide variety of third-party produced items, including merchandise and posters, with Banksy himself having only used it as an artwork. Indeed, it had originally appeared in a public place, where it was free to be photographed by the public, and subsequently made available in digital form by Banksy himself for public personal use – meaning that the mark could not fulfil the basic function of a trade mark of denoting goods’ shared source [Merpel purrs in approval at a 2011 Kat post being exhibited at ARW7].

As a result, Full Colour Black claimed that there were two possible bad faith goals at play: one, to circumvent copyright law provisions by offering Banksy a means of monopolising images of his works without disclosing his identity, and the corollary, that a successful EU registration could be used as a ground for a US trademark registration in equally bad faith. Indeed, Banksy’s disdain for intellectual property rights is very public, having proclaimed that “copyright is for losers” in his book Wall and Piece.

Pest Control responded by contesting Full Colour Black’s evidence, as well as arguing that granting free rein for non-commercial use should not have any bearing on a trade mark in relation to commercial goods. It referred to NEUSCHWANSTEIN, just as in the prior Flower Thrower proceedings, and SKY as support for the proposition that a trade mark registration made “in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith” in light of Full Colour Black’s awareness that Banksy could not otherwise protect the image (given his public anonymity). Moreover, someone who opposes ‘the system’ in theory should not be precluded from enjoying its benefits in practice, and enjoys the same equality before the law (Art. 20 of the Charter of Fundamental Rights of the EU) and freedom of expression (Art. 11.1 CFR) as anyone else – including the right to change one’s mind, which it argued should exclude Banksy’s statements from before the application from affecting the present bad faith determination. In relation to copyright, it challenged the proposition that the work having originally appeared in a public place has any bearing on potential protection and characterised the suite of intellectual property rights as simply complementary.

The decision
    

The Cancellation Division rendered its decision entirely on the basis of Article 59(1)(b) EUTMR, in relation to bad faith at the time of application for the mark. The applicant for a mark must be subjectively determined to have acted in a way which reflects a dishonest intention and judged against an objective bad faith standard, with the burden of proof lying on the invalidity applicant. This follows Advocate General Sharpston’s proposed definition in Lindt Goldhase: “conduct which departs from accepted principles of ethical behaviour or honest commercial or business practices”.

Despite Pest Control’s argument that its corporate intention, not Banksy’s motivations, should be assessed, the Cancellation Division determined that it acted as an agent of Banksy so failed to displace evidence relating to him.

It then moved to consider the distinct purposes and terms of trade mark and copyright protection, being commercial and potentially unlimited and creative and fixed in duration, respectively. While it acknowledged the difficulties of Banksy in making use of copyright protection while maintaining his secretive persona and his enjoyment of fundamental rights, it found that, as elsewhere, personal rights and freedoms can be curtailed where they involve breaking the law. Indeed, Banksy freely chose to confirm online prior to the registration of the contested mark that he did not produce any goods. He then made what would prove to be a strategically unwise move by opening a popup and web shop called Gross Domestic Product for the admitted exclusive purpose of trying to undermine Full Colour Black’s invalidity application via use [see image]. This was determined to be “inconsistent with honest practices”, with the commencement of the sale of goods only after the filing of the invalidity application indicating that the intention at registration was not consistent with the function of a trade mark.

Pest Control’s ‘legitimate reason’ arguments were also rejected by the Cancellation Division, which turned to consideration of the broader artistic trade mark debate and the purpose of intellectual property protection, particularly in relation to the property element. Banksy chose to go down the trade mark route rather than pursuing copyright infringement action because he is anonymous. With mystery adding to his cachet, the requirement in copyright law for his identity to be disclosed in order to be unquestionably determined to be the common creator of his works would arguably devalue, not promote through a guarantee of authenticity, their desirability. While his public disdain for intellectual property rights “does not annul any validly acquired rights to copyright or trademarks”, such comments add light and shade to the bad faith finding. It also suggested that Banksy’s choice of artistic medium might have a bearing, as he sprays graffiti on to others’ property instead of painting it on “canvases or his own property”.

Gross Domestic Product announcement

With Full Colour Black’s application successful in its entirety on the basis of bad faith, the Cancellation Division did not comment on the US arguments and ordered Pest Control to bear the cancellation fee as well as the applicant’s fees and costs.

Comment

In common with its prior Flower Thrower decision, there are several curious elements to the latest episode of Banksy’s engagement with the EUIPO. One is the engagement with the bad faith ground at all, given that it would have been open to the Cancellation Division to sidestep the debate as to Banksy’s subjective state of mind in 2018 via a distinctiveness assessment. Another is the discussion of intellectual property more generally, especially as to the relevance of where the artwork originally appeared to the ability to enjoy copyright protection. Although their stance, expressed in previous chapters of the Banksy cancellation saga, came under criticism from quarters including PermaKat Eleonora Rosati in the post linked above, the Cancellation Division doubled down. It again mentioned the fact that Banksy’s works are graffiti as a potential factor in determining the application of intellectual property protection. Without any elaboration, it is unclear why the Cancellation Division again decided to draw attention to Banksy’s medium, arguably appearing to be as stuffy and moralistic as the wider establishment the artist rails against. While it is correct to state that allowing anonymous artists to circumvent copyright enforcement requirements is not a function of trade mark law, neither is a consistent theory of real and intellectual property a condition for the enjoyment of either right.