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EUIPO’s Cancellation Division declared the trademark
registration for Banksy’s Monkey image invalid on the grounds
of bad faith in spring 2021. In October 2022, that Banksy trademark
decision was overturned based both on the absence of bad faith and
the image’s distinctiveness, as Rosan Slits explains.
When you think about anonymous British street art, Banksy is
invariably the first name to come to mind. This influential
activist artist makes his artworks available for free download
online, but with an explicit exception for commercial purposes.
While Banksy famously said that “copyright is for
losers”, he is increasingly turning to IP to block commercial
use, establishing the Pest Control Office in 2009 to authenticate
artwork and register European trademark (EUTM) rights to the
images. His desire to remain anonymous adds an additional challenge
to IP registration and enforcement however.
Banksy trademark dispute: Is graffiti fair game?
We previously covered the trademark dispute between Banksy and
UK greeting card company Full Colour Black, which had reproduced some of Banksy’s famous artworks on its range
of greetings cards without his authorisation.
While the Pest Control Office had filed 15 EUTMs to protect
certain Banksy artworks, seven of those registrations were subject
to invalidity actions. One of the cases was suspended, but the
remaining six registrations were overturned by the EUIPO’s
Cancellation Division on the grounds that Banksy never intended to
actually use the sign as a trademark. Rather, the purpose of the
registration was to circumvent copyright restrictions to prevent
others from using the sign, hence the finding of ‘bad
faith’.
In particular, the opening of ‘Gross Domestic Product’
in 2019, a showroom featuring Banksy merchandise (see image right),
was taken as an acknowledgement that the artist did not actually
intend to use the artwork as an origin mark. Banksy’s statement
“copyright is for losers” further suggested that anything
depicted in public could be used freely by anyone without
permission. Finally, Full Colour Black argued that Banksy’s
artwork was already widely used in commerce and that Banksy had not
done anything to prevent this from happening.
The Pest Control Office has now contested the first of these
cancellation rulings successfully.
Bad faith under EU trademark law
Following the ruling in Lindt & Sprüngli v
Hauswirth, the Court of Justice of the European Union (CJEU)
gave further interpretation to the concept of bad faith in both the
Koton and Sky v Skykick judgements. The Court
held in Koton that a trademark is filed in bad faith when
relevant and consistent evidence shows that the applicant did not
file the application in order to participate fairly in competition.
Instead, there is an intent to prejudice the interests of third
parties in a manner inconsistent with fair practice or to obtain an
exclusive right for purposes other than those covered by the
functions of a trademark (in particular indication of origin).
In Sky v
Skykick, the CJEU considered (in line with Koton)
that an act is in bad faith if the applicant intended to prejudice
the interests of third parties in a manner inconsistent with honest
practices. For example, a trademark application without any
intention of actually using the trademark for the goods or services
indicated. This is also the case if the applicant intended, even
without a specific third party in mind, to obtain an exclusive
right for purposes other than those covered by the functions of a
trademark. However, the mere finding that, at the time of filing,
the applicant was not engaged in an economic activity corresponding
to the goods and services indicated in the application is not in
itself sufficient to establish bad faith. If the intention to use a
mark in accordance with its essential functions is absent only for
certain goods or services identified in the trademark application,
that application constitutes a bad faith filing only for those
specific goods or services.
Do the Banksy trademark registrations constitute bad
faith?
On appeal, the Board of Appeal took a different view than the
Cancellation Division. In particular, the Board was of the opinion
that, in principle, there is no objection to protecting the same
sign through both copyright and trademark law. The mere fact that
copyright protection is difficult and time-limited does not mean
that applying for trademark protection automatically constitutes an
abuse of trademark law. Trademarks may well have been registered to
prevent others from using the signs. That is the normal purpose of
a trademark registration and does not in itself immediately
constitute bad faith, provided that the applicant is the rightful
owner.
In assessing whether the use of the mark was intended as such,
the Board emphasised that a trademark owner is free to choose when
to use a newly registered mark. Given the circumstances of this
case, it could not be assumed that there was never an intention to
use the marks or allow third parties to use them as licensees.
Finally, the Board did not consider the sizable commercial use
of Banksy art by third parties to have been established, adding
that this argument is more relevant for assessing the
distinctiveness of a sign than it is for establishing bad
faith.
Monkey see, monkey do
It remains to be seen if Full Colour Black will challenge this
ruling and take the dispute to the CJEU. At least for now, it may
give other companies cause to pause before reproducing Banksy
artwork without his permission.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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