No one’s laughing now: Banksy loses yet another famous trade mark
Following a decision in September 2020 against his Flower Thrower figurative trade mark, Banksy faces yet another blow to his trade mark portfolio, with the European Union Intellectual Property Office (EUIPO) ruling in favour of Full Colour Black Limited, who successfully argued that Banksy’s ‘Laugh Now’ figurative trade mark was invalid on the grounds of bad faith (Art. 59(1)(b) EUTMR) and lack of distinctive character (Art. 59(1)(a) EUTMR).
Background
‘Laugh Now’ was created by Banksy in 2002 by way of commission from a Brighton nightclub, in which the sandwich board hung round the monkeys neck read “Laugh now, but one day we’ll be in charge”. Since 2002, this image has served as a basis for numerous works of art.
In 2018, Pest Control Office Limited (Banksy’s official authenticating and handling body) filed an EUTM for the figurative trade mark depicting the monkey with a blank sign around its neck, for goods and services in classes 9, 16, 25, 28, and 41. Following no opposition being filed, the EUIPO registered the application in June 2019.
However, in November 2019, Full Colour Black (a contemporary art licensing company specialising in the commercialisation of world famous street art, including greeting cards specialising in graffiti images and street art) filed an invalidity application against the registration on the grounds of bad faith and lack of distinctive character.
The invalidity
Full Colour Black argued that the figurative trade mark had been used as decoration for a variety of third party produced goods, such as posters, graphic works and merchandise, and argued that Banksy had made no use of the figurative trade mark as such, and had only reproduced the figurative trade mark as an actual work of art. Full Colour Black further argued that the figurative trade mark had been spray painted in public spaces, where it has been available to be photographed by the public and also, had been made available in digital form by Banksy himself on his website for the publics personal use, and arguing that this consequently meant that the figurative trade mark cannot fulfil the essential function of a trade mark, namely indicating origin.
In light of this, Full Colour Black argued bad faith on two grounds:
- That Banksy’s objective was to monopolise images of his artworks without any real intention to use the sign as registered in the course of trade, but rather he was seeking a form of IP protection equivalent to copyright but without disclosing his identity, (having famously proclaimed that “copyright is for losers” in his book Wall and Piece); and
- The resulting EUTM registration could then be used as a basis for a US trade mark application, given that there has been a pattern of filing EUTMs of established works of Banksy and then applying to register the same in the US, using the EUTM as a basis for obtaining registration.
To support its arguments, Full Colour Black filed various pieces of evidence.
In response to these arguments, Pest Control challenged the evidence filed by Full Colour Black, claiming that it was not sufficient enough to prove that the EUTM registration was filed in bad faith. Pest Control argued that the evidence did not show that Banksy had given ‘free-rein’ to the general public to use his copyright, and also said that there is no evidence to prove that non-commercial use of the artwork has been allowed.
Pest Control submitted various examples of works of art which have been filed as trade marks at the EUIPO and argued that these examples show that it is common practice for companies and artists to apply to register their works of art as trade marks for commercial purposes, use and protection, therefore arguing that Banksy’s registration was not filed in bad faith. Pest Control referred to the judgement in NEUSCHWANSTEIN to support its argument that a trade mark registration made “in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith”, especially given Full Colour Black’s knowledge that Banksy cannot otherwise protect his artwork, without disclosing his identity.
Pest Control further went on to state that despite not following the rules per se, one should not be precluded from enjoying the benefits of ‘the system’ in practice, and should be able to enjoy the same equality (Art. 20 of the Charter of Fundamental Rights of the EU (‘CFR’) and freedom of expression (Art. 11.1 CFR)) as everyone else, including the right to change one’s mind, arguing that Banksy’s statement “copyright is for losers” should be excluded from the determination of this bad faith claim.
The decision
The EUIPO came to its decision based on the claim of bad faith (Art. 59(1)(b) EUTMR) at the time the application was filed (in 2018). For bad faith to be proved, the burden was on Full Colour Black to show that Pest Control and Banksy acted in a way which reflected a dishonest intention.
Although the EUIPO acknowledged 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 where such freedoms and rights break the law. In fact, prior to the registration of the figurative trade mark, Banksy chose to confirm online that he did not produce any goods. Further, he opened web and popup shops called “Gross Domestic Product” for the sole purpose of trying to undermine Full Colour Black’s invalidity application via use of the trade mark. The EUIPO considered that the commencement of the sale of goods under the figurative trade mark after the filing of the invalidity application to be “inconsistent with honest practices”, indicating that Banksy’s intention at registration was not consistent with the function of a trade mark.
The EUIPO did not comment on the US arguments made by Full Colour Black, as the invalidity was entirely successful on the grounds of bad faith (Art. 59(1)(b) EUTMR) and therefore, ordered Pest Control to bear the costs.
Comments
From the Flower Thrower decision to now this, Banksy’s other trade marks and his portfolio in general could be at risk of being invalidated at the EUIPO, with already four more cancellation actions filed by Full Colour Black against the following EUTM figurative trade marks:
It will be interesting to review what arguments Banksy uses to defend the actions, or will he consider that ultimately, trade marks are also “for losers”.
