Banksy laughs again in EUIPO TM victory
Graffiti artist wins against greeting card firm | Board of Appeal overturns Cancellation Division’s finding of bad faith | Trademark registration ‘not abusive’ | Brandsmiths | Eleanora Rosati | ZEK Legal | Philipp von Kapff.
In a turnaround in fortunes, anonymous graffiti artist Banksy has prevailed in his latest dispute with a greeting card manufacturer over the use of his ‘ Laugh Now’ figurative trademark.
The EU Intellectual Property Office’s (EUIPO’s) Fifth Board of Appeal annulled the Cancellation Division’s earlier decision that ruled against Banksy, and rejected a ‘bad faith’ invalidity action brought by Full Colour Black.
The London-based greeting card company, which reproduces graffiti and street art, had alleged that Banksy’s only intention in registering ‘Laugh Now’ as a trademark was to prevent others from using it, implying abuse of said registration.
The registered mark depicts a dejected-looking chimpanzee with a blank sign board hanging from its neck. The original image—created in 2002 for a nightclub in Brighton and later sold as an artwork at auction—includes the words: ‘Laugh now, but one day we’ll be in charge’ written on the sign board.
Multiple invalidity proceedings
The Board of Appeal’s decision comes against the backdrop of several of the artist’s trademarks in dispute. Banksy’s legal entity Pest Control Office originally registered 15 trademarks with the EUIPO for various pieces of his artwork.
Full Colour Black brought invalidity proceedings against seven of these registrations, six of which were granted by the Cancellation Division, finding that they had been filed in bad faith.
One of these marks (‘ Flower Thrower’) was declared invalid in 2020, but Pest Control appealed the division’s finding for ‘Laugh Now’ in July 2021. The EUIPO issued its decision on October 25 2022, which was made public this week.
‘Laugh Now’ was registered as a trademark with the EUIPO in June 2019, following an application by Pest Control for use in a variety of commercial goods and services. In November that year, Full Colour Black filed a request for a declaration of invalidity of the registered mark for all of the listed applications.
In May 2021 the Cancellation Division granted the request on the grounds that, among other factors, Banksy chooses to be anonymous and cannot be identified. This, said the division, 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”.
Bad faith finding ‘unjustified’
The Fifth Board of Appeal based its decision on various grounds, including that Banksy only allowed non-commercial use of the mark by third parties. It also found that Banksy’s desire to remain anonymous does not justify a finding of bad faith, and his choice to protect his artwork via trademark registration rather than copyright alone does not show that he was not willing to use the mark when it was filed.
The board also stated that the division “made errors in its consideration of the statements included in the evidence” such as Banksy’s controversial statement that “copyright is for losers”.
“The statement does not state that copyright should not be enforceable, it merely makes an ironic comment,” said the board.
Rejecting the division’s finding of abuse of a trademark, the Board ruled that a party is entitled to grant or withdraw permission to use a trademark (as it does with copyright).
“Any proprietor of the copyright may at a later stage also withdraw any permission to use its artwork and that may also be done via trademark law, once the artwork is registered as a trademark,” stated the board.
“Consequently, there is no abuse of the trademark system, when the EUTM proprietor filed the contested mark. There is rather a certain commercial logic that the proprietor of a copyright seeks to protect his creation also as a trademark enabling him to use that trademark protection in cases of infringements of his mark.”
Conflicting decision
Aaron Wood, who has represented Full Colour Black in its disputes with Banksy, told WIPR: “We are naturally disappointed that the Board of Appeal has concluded that the application was not made in bad faith—this conflicts with a number of decisions in our favour over the last few years.
“Both Banksy and his lawyer publicly stated that they were using their trademark simply to validate it—and this was in the evidence bundle—so to suggest that there was no genuine intent to use the mark seems slightly wide of the mark.”
He continued: “Proving bad faith in the face of complete silence from the applicant is always difficult: the Board of Appeal seems to suggest that even where there is a prima facie argument, a brand owner is probably better to say nothing and condemn the applicant for failure to prove their case than put forward a positive case.
“We will move forward with our other case, where Banksy seems to have attempted a collateral attack on the earlier decisions by refiling for a mark deemed to have been filed in bad faith.”
TM protection ‘not abusive’
But other IP lawyers came out in favour of the decision this week. Eleanora Rosati, a copyright and trademark specialist, and author of the IPKat blog, wrote on LinkedIn: “At last: [the] EUIPO Board of Appeal (correctly) holds that what Banksy may think of copyright does not matter for trade mark registration purposes.”
Zeki Emre Kurt, an IP attorney at ZEK Legal, also commented on LinkedIn that: “The board emphasised that it was perfectly possible to protect the same artwork or sign through both copyright and trademark law. The mere fact that copyright protection presents difficulties and is limited in time does not make trademark protection abusive.”
Philipp von Kapff, member of the Boards of Appeal at the EUIPO, said on the social media platform that: “Banksy’s works of street art are known, but not his or her identity. As a phantom, he or she has difficulty keeping his [or her] or works of art available for anybody. Many free-riders exploit Banksy’s art commercially, and the invalidity applicant is one of them.”
“The case, he added, showed the problems posed by copyright and trademark protection in such scenarios.
“This time the conflict is not about the expired term of protection, ie, copyright is limited in time, trademarks may be eternal, but about procedural issues that render trademark protection more attractive than copyright.”
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