Lawyer Monthly - November 2021 Edition

56 WWW.LAWYER-MONTHLY.COM | NOV 2021 INTELLECTUAL PROPERTY - LESSONS LEARNED FROM THE CANCELLATION OF BANKSY TRADEMARKS the contrary can be demonstrated by contemporaneous evidence at the date of filing, the proprietor’s intention to use the mark as a trademark is evidenced through the filing of the application. The EUIPO based its decision entirely on a finding of bad faith as it considered that therewas clear evidence that Pest Control filed the application for registration without any intention of using the contested EUTM, but with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trademark. There was no genuine intention to use the sign as a trademark. The EUIPO further found that Banksy was not trying to carve out a portion of the commercial market for selling his goods but was merely trying to fulfil the trademark class categories to circumvent use requirements for these goods and to satisfy EUTM rules. At the time of filing of the invalidity application in the case of Flower Thrower, Banksy had not marketed or sold any goods in relation to the trademark . Banksy possibly did not help matters with his comment that he was producing work for the purpose of meeting EU trademark requirements; the decision picked up on an alleged comment from Banksy in an article that “…for the past months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law” . Neither was it helpful to open a pop-up and web shop, called Gross Domestic Product, for the admitted purpose of demonstrating use of the trademark and undermining FCB’s invalidity application while at the same time encouraging the copying and uncredited use of the artist’s images for a variety of non-profit purposes. Under EU trademark rules, bad faith is a subjective state of mind based on the applicant’s intentions when filing an EU trademark. The EUIPO had no compunction in finding this conduct to be inconsistent with honest practices. Pest Control’s statement that Banksy intended to make genuine use of the trademark in the next years could not be used as a defence against an invalidity application. Banksy had only started using the EUTM after the proceedings in Flower Thrower commenced, and about a month before the proceedings in Monkey Sign began . While Pest Control contended that FCB were looking for ways to avoid Banksy’s artist rights, which they knew could not be protected by copyright, FCB in