No one laughs now: Banksy loses yet another famous brand

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Following a decision in September 2020 against his Flower Thrower design mark, Banksy faces a further blow to his trademark portfolio, with the European Union Intellectual Property Office (EUIPO) ruling in favor of Full Color Black Limited, which successfully argued that Banksy’s ‘Laugh Now’ design mark was void for bad faith (Art. 59(1)(b) EUTMR) and lack of distinctive character (Art. 59( 1)(a) EUTMR).

context

‘Laugh Now’ was created by Banksy in 2002 at the request of a Brighton nightclub, in which the sandwich board hung around the monkey’s neck read ‘Laugh now, but one day we’ll be in charge’. Since 2002, this image has served as the basis for many works of art.

In 2018, Pest Control Office Limited (Banksy’s official authentication and processing body) filed an EUTM for the figurative mark representing the monkey with a blank sign around its neck, for goods and services in classes 9, 16 , 25, 28 and 41 As no opposition was filed, the EUIPO registered the application in June 2019.

However, in November 2019, Full Color Black (a contemporary art licensing company specializing in the marketing of world-renowned street art, including greeting cards specializing in graffiti images and street art) filed an application for nullity against the registration on the grounds of bad faith and lack of distinctiveness.

Disability

Full Color Black argued that the design mark had been used as decoration for a variety of products produced by third parties, such as posters, graphics and merchandise, and argued that Banksy had made no use of the design mark as such and had only reproduced the design mark as an actual work of art. Full Color Black further claimed that the design mark had been spray painted in public spaces, where it was available for photography by the public and also, had been made available in digital form by Banksy himself on its website for the personal use of the public. , and arguing that this therefore meant that the design mark could not fulfill the essential function of a mark, namely to indicate origin.

In light of this, Full Color Black pleaded bad faith on two grounds:

  1. Banksy’s aim was to monopolize the images of his works with no real intention of using the sign as recorded in business life, but instead sought a form of intellectual property protection equivalent to copyright. but without disclosing his identity (after proclaiming that “copyright is for losers” in his book Wall and Piece); and

  2. The resulting EUTM registration could then be used as the basis for a US trademark application, as there is a tendency to file EUTMs of established Banksy works and then seek registration in the US , using the EUTM as the basis for obtaining registration.

To support its arguments, Full Color Black filed various pieces of evidence.

In response to these arguments, Pest Control challenged the evidence filed by Full Color Black, claiming that it was not sufficient to prove that the EUTM registration was filed in bad faith. Pest Control argued that the evidence did not show that Banksy gave “free rein” to the general public to use his copyright, and also said there was no evidence to prove that the use not commercialization of the work of art had been authorized.

Pest Control presented various examples of works of art that have been registered as trademarks with the EUIPO and argued that these examples show that it is common for companies and artists to seek registration of their works of art as trademarks for commercial purposes, use and protection, thus arguing that Banksy’s registration was not filed in bad faith. Pest Control referred to the NEUSCHWANSTEIN judgment to support its argument that a trademark registration carried out “in pursuit of a legitimate aim of preventing another party from profiting by copying the sign is not in bad faith “, especially since Full Color Black knew that Banksy cannot otherwise protect his works of art, without disclosing his identity.

Pest Control went on to state that despite breaching the rules per se, one should not be prevented from enjoying the benefits of the “system” in practice, and should be able to enjoy the same equality (Art. 20 of the Charter human rights). EU fundamental rights (“CFR”) and freedom of expression (Art. 11.1 CFR)) like everyone else, including the right to change one’s mind, arguing that Banksy’s statement “the right to author is for the losers” should be excluded from the determination of this allegation of bad faith.

decision

The EUIPO issued its decision on the basis of the allegation of bad faith (Art. 59(1)(b) EUTMR) at the time of filing the application (in 2018). For bad faith to be proven, the onus was on Full Color Black to show that Pest Control and Banksy had acted in a manner that reflected dishonest intent.

Although the EUIPO recognized Banksy’s difficulties in making use of copyright protection while keeping his identity secret and using his fundamental rights, it found that freedoms and rights can be limited when those freedoms and rights are breaking the law. Indeed, before the registration of the figurative mark, Banksy chose to confirm online that he was not producing any goods. Additionally, he opened online stores and pop-up stores called “Gross Domestic Product” with the sole purpose of trying to undermine Full Color Black’s disability claim through the use of the trademark. The EUIPO considered that the start of the sale of products under the figurative mark after the filing of the declaration of invalidity was “inconsistent with honest practices”, indicating that Banksy’s intention when registering was not consistent with the function of a mark.

The EUIPO has not commented on the US arguments put forward by Full Color Black, given that the invalidity was entirely successful due to bad faith (Art. 59(1)(b) EUTMR) and therefore ordered Pest Control to bear the costs.

comments

From the Flower Thrower decision until today, Banksy’s other trademarks and its portfolio in general are at risk of invalidation by the EUIPO, with already four other cancellation actions filed by Full Color Black against the following EUTM figurative marks :

It will be interesting to review what arguments Banksy uses to defend stocks, or will he ultimately consider brands to be “for losers” too.

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