Registering a trade mark even if you think that copyright is for losers? Not bad faith, says (finally) EUIPO BoA

Banksy's Laugh Now But One
Day We’ll Be In Charge

A while ago The IPKat reported [here and here] on a string of cancellations of elusive artist Banksy’s EU trade mark (EUTM) registrations relating to some of their best-known artworks.

The reason? Among other things, that such registrations would have been made in bad faith in accordance with Article 59(1)(b) EUTMR. But why? To use Advocate General Sharpston’s language in Lindt - the “dishonest intention” on the side of Banksy and their company Pest Control would have been lack of genuine intention to use the trade mark registrations as these would have been exclusively sought to circumvent the “problems” caused by copyright, notably the fact that any enforcement initiatives would require Banksy to disclose their identity.

In connection with the cancellation of the EUTM registration relating to Flower Thrower, I expressed my dissatisfaction with the reasoning and the decision of the EUIPO Cancellation Division, also due to the fact that that authority considered Banksy’s attitude towards copyright (in the past they referred to it as being for losers) relevant to the action (why?) and also that the realization of Banksy’s works out of illegality (meaning: on third-party property) would mean that they would not be protectable works (why?).

As mentioned, further EUTM cancellations followed.

Now the tables seem to have turned: in a decision issued a few weeks ago, the EUIPO Fifth Board of Appeal annulled (R 1246/2021-5) the Cancellation Division’s decision relating to a trade mark registration for Banksy’s Laugh Now But One Day We’ll Be In Charge. 

Incidentally, such trade mark was registered in spring 2019 and the invalidity challenge was launched just a few months later.

Let’s see how the Board reasoned.

(Ir)relevance of the circumstance that the EUTM represents an artwork

First of all, the Board considered the application of Article 59(1)(a) in conjunction with Article 7(1)(b)-(c) EUTMR.

It noted that each IP right has its own subsistence requirements (see also Gömböc; IPKat here, here, and here): the fact that a sign represents an artwork that can be or could have been protected by copyright (e.g., a public domain work) does not preclude at the outset that it could be also regarded as a badge of origin and, as a result, be protected as a trade mark.

Then, the Board noted that:

The contested sign consisting of the representation of an ape wearing a label which is empty is contrary to the views of the Cancellation applicant not merely an ornamental feature which will go unnoticed but is rather an unusual combination of elements as the ape wearing a white label which is quite striking and will be kept in mind by the consumers.

This indicates that the conclusion that such sign would be devoid of distinctive character or descriptive would not follow automatically.

Bad faith

Turning to bad faith, the Board recalled at the outset that its assessment requires a holistic approach. Among other things it considered that:

• The circumstance that the artwork contained in the sign was made publicly available beforehand as a graffiti artwork and that Banksy did not take steps to protect their copyright in relation to non-commercial uses of their work [for commercial uses, see this enforcement initiative in Italy] does not mean that there was never an intention to use the sign as a trade mark;
• The fact that in the past Banksy expressed a critical view of copyright, as being something “for losers”, is irrelevant given the fundamental right to express one’s own opinions, also in accordance with Article 19 of the Universal Declaration of Human Rights. In any event, it remained undemonstrated how such a statement could lead to the conclusion that the trade mark had been applied in bad faith;
• The cancellation action was launched less than a year after registration of the EUTM: there is a 5-year grace period which will expire in June 2024. This means that the EUTM owner has time until then to start genuine use of the registered sign.

In conclusion, the Board found that the Cancellation Division had erred when it concluded that the registration of the EUTM at hand had been done in bad faith.

Comment

How can the decision of the Board be considered if not a display of common sense (as well as correct application of relevant legal provisions)?

As mentioned, a bad faith finding based on Banksy’s own views of copyright and their behaviour in relation to copyright licensing/enforcement initiatives or even the circumstance that the realization of their artworks out of illegality would be relevant under trade mark law was and would have been clearly wrong.

As the Board noted, a trade mark registration could be revoked due to lack of non-use: this is in line with EU case law, including SkyKick [IPKat posts here].

On a final note, the Board’s remark that each IP right’s subsistence requirements must be evaluated having regard to the applicable system of norms is not ground-breaking either … yet it seems to be often a forgotten principle!