Registering a trade mark even if you think that copyright is for losers? Not bad faith, says (finally) EUIPO BoA

· trade marks,bad faith,Banksy

A while ago The IPKat reported [here and here] on a string of cancellations of elusive artist Banksy’s EU trade mark (EUTM) registrations relating to some of their best-known artworks.

The reason? Among other things, that such registrations would have been made in bad faith in accordance with Article 59(1)(b) EUTMR. But why? To use Advocate General Sharpston’s language in Lindt - the “dishonest intention” on the side of Banksy and their company Pest Control would have been lack of genuine intention to use the trade mark registrations as these would have been exclusively sought to circumvent the “problems” caused by copyright, notably the fact that any enforcement initiatives would require Banksy to disclose their identity.

In connection with the cancellation of the EUTM registration relating to Flower Thrower, I expressed my dissatisfaction with the reasoning and the decision of the EUIPO Cancellation Division, also due to the fact that that authority considered Banksy’s attitude towards copyright (in the past they referred to it as being for losers) relevant to the action (why?) and also that the realization of Banksy’s works out of illegality (meaning: on third-party property) would mean that they would not be protectable works (why?).

As mentioned, further EUTM cancellations followed.

Now the tables seem to have turned: in a decision issued a few weeks ago, the EUIPO Fifth Board of Appeal annulled (R 1246/2021-5) the Cancellation Division’s decision relating to a trade mark registration for Banksy’s Laugh Now But One Day We’ll Be In Charge.

broken image

Banksy's Laugh Now But One Day We’ll Be In Charge

Incidentally, such trade mark was registered in spring 2019 and the invalidity challenge was launched just a few months later.

Let’s see how the Board reasoned.