In its decision of 18 May 2021, the Cancellation Division of EUIPO invalidated a figurative trademark partially depicting one of the famous graffiti works of Banksy for bad faith registration. In a nutshell, Banksy cannot obtain protection of a trademark solely because he could not rely on copyright rights without losing anonymity, as this is not a function of a trademark.
Background
The famous graffiti artist known as Banksy created in 2002 a piece of art commissioned by a night club in Brighton depicting 10 monkeys standing side by side and all bearing a sign: four of the signs were empty, while six signs contained the words “Laugh now, but one day we’ll be in charge”.
On 7 November 2018 Pest Control Office Limited (“Pest Control” or the “Proprietor”) applied for an EU figurative trademark depicting one of the monkeys in the mentioned work, with the sign empty, as in the representation below.
(Source: https://www.tmdn.org/tmview/#/tmview/detail/EM500000017981629)
The above trademark was registered on 8 June 2019. On 28 November 2019 Full Colour Black Limited (the “Applicant”) filed an application for a declaration of invalidity against the mentioned trademark, for bad faith registration on the ground of article 59(1)(a) EUTMR and for other grounds.
The Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) upheld the application and declared the trademark invalid for all the contested goods and services, on the ground of bad faith, without further analysing the other grounds.
Arguments of the Parties and the Cancellation Decision
The Applicant argued that the contested trademark is the exact reproduction of one of the works of the street artist Banksy, and that Pest Control is the corporate body which deals with the matters of Banksy. In what concerns the plea of bad faith, the Applicant argued that the contested trademark was initially a work of graffiti that was free to be photographed by the general public and has been reproduced widely by third parties with Banksy’s permission and without there being any commercial connection between these third parties and Banksy. Furthermore, Banksy does not use the image for which registration was sought as a trademark. The fact that the work was available for free downloading and use for non-commercial purposes means that the work was placed on all kinds of goods with the result that the goods cannot be identified as coming from a single source. Even if Banksy states on his website that companies are using his sign without permission for commercial purposes, no evidence was submitted that he sought to defend against this. The Applicant also argued that the contested trademark was registered to circumvent copyright law, to monopolise images on an indefinite basis and to avoid evidential burdens relating to allegation of copyright infringement.
The Proprietor argued that Banksy’s permission for his copyright to be reproduced for non-commercial purposes did not extend to commercial use in the course of trade and the fact that Banksy has not initiated enforcement proceedings against those using its copyright is irrelevant to show the intention at the time of the filing of the trademark. On another note, the Proprietor argued that (i) is common practice for artists and companies to register their artwork as trademarks and (ii) obtaining a trademark registration through an incorporated company in order to enforce unregistered trademark rights and copyright without prejudicing his public persona or business interests is a legitimate objective and not an application in bad faith. Trademarks and copyrights are not mutually exclusive, they merely provide different rights and remedies the parties can chose from. The Proprietor also argued that trademarks cannot be monopolised indefinitely if they are not put to genuine use.
The Cancellation Division invalidated the contested trademark for all the classes of goods and services. It considered that the trademark was filed in bad faith as the proprietor had no intention to put to genuine use the contested trademark, to create or maintain a share of the market by commercialising goods; the intention at the filing date was rather to circumvent the law, particularly to enable the artist to maintain anonymity (that does not allow him to enforce his copyrights) and protect his work via trademark laws.
Comment
As discussed in an earlier post, bad faith is not a defined concept in the trademark legislation. Bad faith within the meaning of the Directive to approximate the laws of the Member States relating to trademarks (article 4(4)(g) of Directive 89/2014/EEC, article 4(4)(g) of Directive 2008/95, article (5)(4)(c) of Directive 2015/2436) is an autonomous concept of European Union law (see Case C-320/12, Malaysia Dairy Industries Pte. Ltd v. Ankenavnet for Patenter og Varemarker, para. 29) and should be construed in the same manner as in the context of Regulation 207/2009 (now Regulation 2017/1001), as both pieces of legislation pursue the same objective, namely the establishment and functioning of the internal market (Malaysia Dairy, para. 35).
In order to permit the conclusion that the applicant is acting in bad faith it is necessary to take into consideration all the relevant factors specific to the particular case at the time of filing the application for registration (Malaysia Dairy, para. 36-37).
In the case discussed in an earlier post, bad faith was found in case of re-filing of identical trademarks as the intention was to circumvent requirements of proving genuine use. In Banksy, bad faith was found for lack of an intention to put the trademark to genuine use.
It is probably safe to say that in most, if not all cases, there would be no express acknowledgment by a trademark applicant that indeed it filed a trademark in bad faith. The judicial bodies must determine based on the evidence what was the state of mind of the applicant at the filing date. This is normally done by assessing the objective factors proven in a specific case.
In Banksy, the Cancellation Division relied on the fact that:
- Banksy could not enforce his copyrights against third parties, at least not without exposing his true identity.
- Banksy has never marketed or sold any goods or services under the contested trademark. The first evidence of sales appears to have happened just before the date of filing of the application for cancellation, but both Banksy and a director of Pest Control stated publicly that the goods were created and being sold with the sole purpose to show use for these goods (in other words to circumvent the non-use of the sign requirement under the trademark laws). There was no intention at the application date to genuinely use the contested sign as a trademark. The Cancellation Division concluded that the contested trademark was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but this is not a function of a trademark.
- Banksy gave express permission for the public to download and use its works of art as they wished, with the exception that it was not used for commercial purposes. When he learnt that his work was used by third party companies to commercialize goods and denied that this was done with his permission, he did not take any form of legal action to prevent these actions.
The decision is consistent with the judgements of CJEU and of the General Court (e.g. the judgement of 21 April 2021 in Monopoly, Case T-663/19; the judgement of 29 January 2020 in Sky, Case C‑371/18, paras. 74-81; the judgement of 12 September 2019 in Koton, Case C‑104/18 P; the judgement of 23 May 2019 in Holzer y Cia/Ann Taylor, Joined Cases T‑3/18 and T‑4/18).
The specificity of this case lies in the intersection of trademark laws and copyrights and is a reminder of the distinct regime applicable to each of them, and functions they fulfil.
The fact that the Proprietor was different from Banksy also triggered specific findings. As mentioned above, the public statements of Banksy were a decisive factor for determining bad faith registration. The Proprietor argued during the proceedings that the person and the company are distinct and that the opinions of the individual cannot harm or show the position of the business. The Cancellation Division rejected this argument as the Proprietor was deemed to be the representative or agent of Banksy as the principal.
It is important to note that the fact that a trademark owner is allowed a five-year grace period to use the trademark did not impede a finding of bad faith. The decision of the Cancelation Division is sensible, as even if the contested trademark were put into use, what is relevant in assessing bad faith is the intention at the filing date. According to the public statements of Banksy and the Proprietor, the intention was to circumvent the non-use requirement under EU law, which does not represent genuine use in the sense of the trademark laws.
Takeaways
Trademark owners should record their intentions when deciding to register their trademarks, to be able to show what their intentions were. This is important as even if the burden of proof of the existence of bad faith lies with the applicant and good faith is presumed, once the applicant makes a case for bad faith, the proprietor should prove that it had a legitimate reason for filing the trademark, as the Cancellation Decision has held.
