Lawyer Monthly - November 2021 Edition

55 NOV 2021 | WWW.LAWYER-MONTHLY.COM INTELLECTUAL PROPERTY - LESSONS LEARNED FROM THE CANCELLATION OF BANKSY TRADEMARKS The EUIPO cancellation division has now invalidated a series of Banksy’s figurative trademarks, of which the decisions concerning ‘Flower Thrower’ and ‘Monkey Sign’ were the most widely reported and commented on (the trademarks were actually registered by Pest Control Office Limited (“Pest Control”), the company which represents Banksy in public and authenticates his art works. Banksy still holds a portfolio of other trademarks for his images and artworks, and it would not be surprising to see the rest of his portfolio also being challenged on similar grounds. While there may be doubts as to whether he will prevail in defending them, he has since applied to re-register some of the cancelled trademarks. The ongoing story of Banksy’s trademark invalidations in Europe raises interesting issues for the art world at the interface of art law and IP about the boundaries and limits of copyright law and trademark protection. These cases highlight that both types of intellectual property exist to protect different rights within their own legal framework and without regard to rightsholder preferences. At the heart of trademark legislation lies the protection of commercial interests and brand assets whereas copyright, on the other hand, is aimed at protecting the artist’s creativity. Relying on a trademark simply because copyright protection is not afforded for a particular artwork will not be accepted by the EUIPO as a satisfactory reason to retain that trademark. The renowned British street artist going by the name Banksy had always made a point of remaining anonymous, which added to the mystery surrounding his artist persona. A new record was set for his work in October 2021 when his now famous shredded art piece ‘Girl with a Balloon’ sold for £18.5million at Sotheby’s in London . However, this anonymity at the same time prevents him from asserting copyright in his works, which would of course otherwise benefit from copyright protection and enable him to defend his IP by bringing a claim for breach of copyright against infringers. But, in order to protect his anonymity, Banksy instead attempted to protect his works through trademark registrations. These registrations were challenged by Full Colour Black Limited (“FCB”), a greeting card company unrelated to Banksy which re-creates images of his artworks for sale, as having been filed in bad faith. Legal analysis The two applications for the invalidation of the trademarks in ‘Flower Thrower’ and ‘Monkey Sign’ were argued on similar grounds, both on the applicant’s (FCB’s) and the proprietor’s (Pest Control’s) side. FCB invoked the ground of bad faith under Article 59(1)(b) EUTMR and also the ground of lack of distinctive character under Article 59(1)(a) EUTMR in connection with Articles 7(1)(b) and 7(1)(c) EUTMR, which are all absolute grounds for revocation. The basic challenge was that Banksy acted in bad faith because he sought to circumvent the requirements of copyright law by seeking to monopolise images of his works without disclosing his identity. An application for a declaration of invalidity under Art 59 EUTM (grounds for invalidity) must of course be distinguished from applications under Art 58 EUTM (grounds for revocation), as the first examines the validity of the registration when it was first applied Relying on a trademark simply because copyright protection is not afforded for a particular artwork will not be accepted by the EUIPO as a satisfactory reason to retain that trademark. for, while the latter tests whether the sign has been put to genuine use within a continuous period of five years. The EUIPO rejected Pest Control’s argument that thematter should be assessed under Art 58. Banksy may have had a somewhat more convincing case if the EUIPO had followed this request since he appears to have started using the Monkey Sign trademark before FCB’s application in the Monkey Sign case (albeit, arguably, in contemplation of the lawsuit). Under EU trademark rules, bad faith is a subjective state of mind based on the applicant’s intentions when filing an EU trademark. The applicable test in an action by the cancellation applicant against the registered proprietor, based on bad faith, is actually a two-stage test, which first requires the applicant to demonstrate a dishonest intention by the registered proprietor which is then judged against an objective bad faith standard against which that action can be measured to come to an overall assessment. In both decisions, the EUIPO therefore focused on the facts surrounding the time when Banksy filed the trademark applications. The decision in Flower Thrower is useful for an understanding of the proper construction of the term ‘bad faith’. Banksy relied on the SKY decision in support of an argument that, unless