World Trademark Review (LINK)
“This is a case about intention”: Banksy’s trademark troubles continue as EUIPO invalidates four more marks
- The EUIPO Cancellation Division upholds four invalidation applications
- Hits out at artist’s efforts “to circumvent the law” through evidence of use
- Dispute with Full Colour Black has resulted in six cancellations, one case pending
The EUIPO Cancellation Division has declared four of street artist Banksy’s trademarks invalid, hitting out at his efforts “to circumvent the law”. The decisions mean that six Banksy marks have now been invalidated in a series of cases brought by Full Colour Black. The lawyer representing the company has welcomed the latest decisions but adds: “The only concerns are that, to date, Banksy has not paid any costs. One hopes that a winding-up order won’t be necessary.”
The decisions are the latest in a long-running dispute between Banksy’s legal handling entity, Pest Control Office, and UK-based greeting card company Full Colour Black. In September 2020 we reported that the artist had had a trademark for one of his well-known artworks cancelled on the grounds that it had been filed in bad faith, with another decision going against him last month. The initial decision took into account Banksy’s launch of a homeware shop, entitled Gross Domestic Product, in an effort to show use of the disputed mark. However, Banksy stated that opening a shop because of a legal dispute “is possibly the least poetic reason to ever make some art” and the move backfired, with the Cancellation Division ruling that the mark should be declared invalid on the grounds of bad faith, the shop having been set up only after the dispute was initiated in a bid “to circumvent the requirements of trademark law”.
This has come into play again in the latest round between the two parties. On Friday the EUIPO upheld applications for invalidity of Banksy’s ‘radar rat’ and ‘girl with an umbrella’ EU trademarks (cancellation numbers C40 001 and C39 872), while today it took a similar stance against the artist’s ‘bomb hugger’ (C39 921) and ‘painting rat’ (C40 000) marks.
In this spate of decisions, the Cancellation Division took issue with the evidence submitted, which suggested that, at the time of filing the applications for invalidity, Banksy had never actually marketed or sold any goods or services under the contested EU trademarks. Going further, it highlighted Banksy’s own comments on the motivation for opening the Gross Domestic Product shop, including that “sometimes you go to work and it’s hard to know what to paint, but for the past few months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law”.
As the Cancellation Division noted, the central issue in the dispute was not whether the marks have been put to genuine use under Article 58 of the EU Trademark Regulation, but what the owner’s intention was at the time of filing – bad faith applying if the applicant had no intention to use the mark at that point in time.
Reflecting on Banksy’s predicament, the decision states:
To protect the right under copyright law would require him to lose his anonymity which would undermine his persona. It is clear that when the proprietor filed the EUTM he did not intend to use the EUTM and actual use was only made of the EUTM after the initiation of the previous proceedings No 33 843 and approximately one month prior to the filing of the present proceedings, and such use was identified as use to circumvent the requirements of trademark law and thus there was no intention to genuinely use the sign as a trademark. Banksy was trying to use the sign only to show that he had an intention of using the sign, but his own words and those of his legal representative, unfortunately undermined this effort. Thus, it must be concluded that there was no intention to genuinely use the sign as a trademark and the only eventual use made of the sign was made with the intention of obtaining an exclusive right to the sign for purposes other than those falling within the functions of a trademark.
The decision references the recent MONOPOLY ruling (Hasbro v EUIPO, Case T-663/19), which clarified that the concept of ‘bath faith’ may refer to situations where it is apparent that the owner of an EU trademark did not seek to register its mark with the aim of engaging fairly in competition but, rather, with the intention of either undermining the interests of third parties in a manner inconsistent with honest practices or obtaining an exclusive right for purposes other than fulfilling the main function of the mark.
In this case, use of the mark was made “only to circumvent the law”. Thus, Banksy’s actions were deemed to be “inconsistent with honest practices”. The Cancellation Division therefore concluded that the applications for invalidation were fully successful and ordered that the EU trademarks be declared invalid for all the contested goods and services. It also awarded costs to Full Colour Black.
Aaron Wood, trademark attorney at Blaser Mills, who represented Full Colour Black in the dispute, told WTR: “This is a case about intention. When we filed it, the MONOPOLY case had not been decided, but we felt it was an obvious conclusion that if you file a trademark for purposes other than those for which trademarks were intended then this would be classed as ‘bad faith’. We originally filed six cases, including an action against the ‘flower thrower’. All six have now been successful, and a seventh is pending – Banksy re-filed the flower thrower and is trying his hand again. It seems unlikely that a re-filing which has the further issue of effectively subverting the EUIPO’s decision will have a better prospect than the original. We are obviously very pleased to have had complete success so far. The only concerns are that, to date, Banksy has not paid any costs. One hopes that a winding-up order won’t be necessary.”