Banksy's mark representing his 2002 graffiti of a monkey strapped with a blank sign, which in the original artwork reads "Laugh now, but one day we'll be in charge" - has just been declared valid by the EUIPO Board of Appeal.
Pest Control Office Limited, the company handling Banksy's legal affairs, had filed an EU Application for the mark in 2018, covering goods in Classes 9, 16, 25 & 28 and services in Class 41.
A few months after the mark registered, Full Colour Black Limited, describing themselves as "a contemporary Art Licensing company specialising in the commercialisation of world famous street art" filed a request for a declaration of invalidity, claiming descriptiveness/non-distinctiveness and bad faith.
In May 2021, the Cancellation Division declared the registration invalid on the following grounds:
- As Banksy has chosen to be anonymous and cannot be identified this would hinder him from being able to protect this piece of art under copyright laws without identifying himself, while identifying himself would take away from the secretive persona which propels his fame and success;
- There is no evidence that Banksy was actually producing, selling or providing any goods or services under the contested sign prior to the filing;
- In an article Banksy says "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 trade mark categories under EU law”;
- It is clear that the proprietor did not intend to use the mark and actual use was only made approximately one month prior to these proceedings. Banksy was trying to use the sign only to show that he had an intention of using the sign;
- The contested EUTM was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that is not a function of a trade mark.
The Board of Appeal has now cancelledthis decision, by highlighting the following:
- The relief from not being required to reveal his identity does not exclude the intention to use the trade mark;
- From his statement ‘Copyright is for losers' it may not be extrapolated or concluded that Banksy will use the system of trade mark protection as mere substitute of copyright in an unlawful manner. It may neither be concluded that the proprietor has in general a negative view on Intellectual Property Rights which would lead to a filing of a trade mark without any intention to use it;
- The extrapolation of bad faith from the aforementioned statement is based on a purely subjective view which as such cannot explain logically any unlawful intention;
- The contested decision does not reason sufficiently its finding of bad faith.
To conclude, it was decided that all the arguments, facts and reasonings provided by the Cancellation applicant taken as a whole cannot justify or explain clearly a dishonest behaviour and consequently, the presumption of good faith is still valid.
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