EUIPO cancels second Banksy TM
The EU Intellectual Property Office (EUIPO) has cancelled another trademark owned by street artist Banksy, determining it had been filed in bad faith.
Banksy’s ‘Laugh Now But One Day We’ll Be In Charge’, which depicts a monkey wearing a sandwich board with the slogan, is the second of the artist's works to be cancelled by the EUIPO, following the ‘flower bomber’, which was invalidated for bad faith in September last year.
‘Laugh Now’ is one of Banksy’s most iconic works, first commissioned by Brighton, UK, nightclub Ocean Rooms in 2002. A trademark for the piece was filed by Pest Control on behalf of Banksy, in order to protect his anonymous identity, in 2018.
The mark was registered in June 2019 across EUTM classes 9, 16, 25, 28 and 41.
Bad faith arguments
Greeting card company Full Colour Black filed an application for declaration of invalidity against the trademark in November 2019 on the grounds of bad faith.
It claimed that the ‘Laugh Now’ filing was made in bad faith, citing the intent of Banksy’s representatives that the registrations were “not intended to be used and have concocted sham efforts to try and mislead the EUIPO into believing that there was such an intent”.
The company said that the filing was made to “circumvent copyright law” by gaining rights protections without disclosing Banksy’s identity in order to monopolise the image.
Banksy’s personal views on IP were also invoked, with the greeting card company quoting from his book ‘Wall and Piece’ that claims “anything depicted in public is free for use by all and permission is not required”.
Full Colour Black also argued that the graffiti was sprayed in a public place, was free to be photographed by the general public and has been reproduced by a large number of third parties as decoration for items such as posters, whereas Pest Control has made “no use” of the mark.
“Banksy permitted parties to disseminate his work and even provided high-resolution versions of his work on his website and invited the public to download them and produce their own items,” the filing said.
The defence
Pest Control claimed that Full Colour Black did not provide enough evidence to support the claim that Banksy had given “free rein” to the general public to use his copyright.
“There is no evidence that Banksy allowed even non-commercial use of the work but only for non-commercial use of the images,” Pest Control claimed.
It also claimed that previous comments from Banksy showing disdain for IP rights should be excluded from the proceedings and that they had no bearing on Banksy’s right to protect the image.
The Cancellation Division rendered its decision entirely based on Article 59(1)(b), determining that Pest Control had acted in bad faith, having filed for the mark to obtain an exclusive right for purposes other than those falling within the functions of a trademark.
Pest Control was ordered to pay costs and bear cancellation fees and can file a notice of appeal within two months of the decision.
‘Flower bomber’ proceedings
The EUIPO cancelled Banksy’s ‘flower bomber’ trademark in September 2020 following an opposition brought by Full Colour Black.
It had claimed that the artist had made no commercial use of the mark. In October, the artist was “forced” to set up a homeware shop in South London to establish his usage of the IP.
Commenting on this, Banksy claimed: “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 trademark categories under EU law.”
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