Banksy trade mark survives bad faith challenge

In EUIPO Case R 1246/2021-5 Banksy’s ‘Laugh Now’ trade mark has been upheld on appeal

10 January 2023

The EUIPO Board of Appeal has annulled the earlier decision of the Cancellation Division to cancel the below figurative EU trade mark registration held by Pest Control Office Limited on behalf of the pseudonymous English street artist Banksy.

The figurative EU trade mark

Background

Based on a piece of street art created by Banksy in 2002, known as ‘Laugh Now’ (the monkey’s placard originally reading ‘Laugh now, but one day we’ll be in charge’), the mark was registered on 8 June 2019 for a range of goods and services including clothing and printed matter.

In November 2019 Full Colour Black Limited (“FCB”) applied for the mark to be declared invalid, arguing that it had been filed in bad faith. Banky’s anonymous status prevents him from asserting copyright in his works. FCB claimed that Banksy had filed the trade mark in order to acquire legal rights that would allow him to prevent others from exploiting the Laugh Now artwork, without having to rely on copyright. FCB also claimed that Banksy had no intention of ever using the trade mark, citing a past comment by Banksy that he had only started to sell certain goods bearing his works in order to fulfil the 'use' requirements of trade mark law (which require you to put your rights to genuine use within 5 years).

At first instance the Cancellation Division accepted FCB’s arguments, concluding that Banksy had had no intention of using the mark as a trade mark, and that the acquisition of rights over an artwork for the purpose of circumventing an inability to rely on copyright was not one of the functions of a trade mark: the mark had been filed in bad faith.

The Appeal

The Board of Appeal reversed the Cancellation Division’s decision, restating the position that an applicant is to be presumed to have acted in good faith at the time of filing until evidence of bad faith is adduced, which FCB had failed to do.

The fact that Banksy had opted for trade mark protection because it was a more efficient form of protection in his circumstances did not demonstrate that he was not willing to use the contested mark when it was filed, nor was there any reason to believe that Banksy would seek to use the trade mark system in an unlawful manner as a ‘substitute’ for copyright. The fact that the contested mark consisted of an artwork also protected by copyright was no obstacle for trade mark protection – it is not uncommon for figurative trade marks to also qualify for copyright protection.

Moreover, the comment attributed to Banksy carried limited evidential weight in the context of the application (particularly when considering that the application had been brought less than 6 months into the 5 year grace period for using the mark). FCB had failed to provide the clear, striking, and convincing arguments necessary to infer that at the time of the mark’s filing Banksy had no intention to use the mark, whether immediately or later during the mark’s grace period.

Conclusion

The judgment reiterates the importance of adducing convincing, tangible evidence of bad faith – rather than mere conjecture or opinion – when seeking the cancellation of a mark. Whilst Banksy’s circumstances are unique, other artists and creators of visual content will be pleased with the Board of Appeal’s assurance that seeking trade mark protection for works also protected by copyright is an acceptable practice and does not constitute bad faith.

If you require assistance in relation to registering or challenging a trade mark, or would like any further information, please contact Emily Roberts or Alison Brennan.

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Emily Roberts

Emily Roberts Partner

  • Intellectual Property and Media
  • Intellectual Property Disputes
  • Intellectual Property Portfolio Protection

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