Banksy’s trade marks once again at the centre of attention, this time with repeat filings as bad faith

A while ago, the IPKat reported [here, here, and here] on a number of cancellation actions directed at Banks’s EU trade mark (EUTM) registrations representing his artworks.

In particular, in 2020, the Cancellation Division of the European Intellectual Property Office (EUIPO) declared an EUTM representing one of Banksy’s best known artworks, the Flower Thrower (depicted below), invalid on grounds of bad faith pursuant to Article 59(1)(b) EUTMR:

Having the above in mind, the Flower Thrower would yet again, this time in 2023, find itself at the mercy of the Cancellation Division of the EUIPO.

Background

In 2020, Pest Control obtained the registration of the figurative mark represented above as an EUTM in relation to goods and services in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, and 42. The same year, the applicant, Full Colour, filed a request for a declaration of invalidity for all relevant goods and services on grounds of bad faith under Article 59(1)(b) EUTMR and also pursuant to Article 59(1)(a) EUTMR in connection with Article 7(1)(b) and (c) EUTMR.

The parties’ arguments

The applicant submitted, amongst other things, that the mark for which protection was obtained was identical to EUTM No 12 575 155 (that is: the registration at issue in the 2020 case mentioned above). In considering that the earlier mark became vulnerable to cancellation for non-use on the very date of the date of filing of the contested mark, the present mark should be regarded as a repeat application intended to avoid the issue of proof of use.

In turn, the EUTM holder submitted that it intended to use the contested mark as a trade mark and had also done so. Furthermore, the reasoning behind the filing of the contested mark was not to avoid the requirement to prove genuine use, but rather to ensure trade mark protection for a mark that it had been preparing to use. Finally, according to the proprietor, the contested mark could have not been considered a repeat application given that there were some differences between the goods and services specification of the contested mark and those of the previous mark.

The decision: bad faith (Article 59(1)(b)) EUTMR

The Cancellation Division recalled that, for a finding of bad faith there must be:

1) some action by the EUTM proprietor which clearly reflects a dishonest intention, and

2) an objective standard against which such action can be measured and subsequently qualified as constituting bad faith.

According to the Applicant, the dishonest intention subsisted in the fact that the present EUTM registration constituted a repeat refiling of the earlier EUTM No 12 575 155. In this regard, the Cancellation Division held that, although repeat filings of a mark are not prohibited per se, the fact remains that such a filing which is carried out in order to avoid the consequences entailed by non-use of earlier marks may constitute a relevant factor which is capable of establishing bad faith on the part of the person who filed that mark (T-136/11, Pelikan, EU:T:2012:689).

A repeat filing can therefore be an indication of bad faith if it reveals an intention contrary to acceptable commercial behaviour, for example, the intention of circumventing the registration system. In this regard, the timing of its application and the strictly identical nature of some contested goods and services were relevant factors considered in the assessment of the bad faith. The EUTM proprietor did not provide arguments explaining why it re-filed an identical mark for goods and services which were identical to some of the goods and services already covered by its earlier registration.

Taking into account all the factual circumstances, the Cancellation Division concluded that the filing of the application of the contested EUTM, insofar as it included the goods and services already covered by an earlier EUTM registration, was made without any commercial logic and therefore in bad faith. 

Conclusion

The decision is important since it, firstly, reinforces the fact that repeat filings may constitute bad faith if the aim is to circumvent the consequences entailed by non-use and/or it is revealed that such repetitive conduct discloses an intention contrary to acceptable commercial behaviour.

Secondly, the Cancellation Division addressed the Applicant’s claim, namely that the EUTM proprietor filed the contested mark in order to circumvent the limitations of copyright (including, for someone like Banksy, having to disclose his identity in potential enforcement initiatives). In this regard, the Cancellation Division concluded that it may not be extrapolated that an EUTM proprietor will use trade mark protection as a substitute for copyright protection in an undue manner. Nor could it be concluded that the EUTM proprietor had in general a negative view of IP which would lead to a filing of a trade mark without any intention to use it.