Lawyer Monthly - November 2021 Edition

Gregor Kleinknecht Partner, Anastassia Dimmek, Associate Hunters Law LLP, 9 New Square, Lincoln’s Inn, London WC2A3QN E: artlaw@hunterslaw.com www.hunterslaw.com Gregor Kleinknecht is a partner and heads the art law team at Hunters, where he specialises in art and cultural heritage law as well as IP. He is also a mediator and arbitrator with Art Resolve, the dedicated dispute resolution service for art and cultural heritage claims. Anastassia Dimmek is an associate at Hunters. Her areas of practice include business services – with a focus on commercial, company and intellectual property matters – and art & cultural property, where she advises a broad range of clients on contentious and non- contentious art law matters. Hunters is a leading full-service law firm based in Lincoln’s Inn that offers specialist legal advice across a range of services. Founded in 1715, the firm’s clients range from private individuals and businesses to trusts, landed estates and charities, and it has recently been credited in The Times Best Law Firms 2021. Be sure to view this article on the Lawyer Monthly website, where a full list of useful sources is supplied. 1 EUIPO Decision on Cancellation No 39 843 C (Invalidity) (https://euipo.europa.eu/copla/trademark/data/012575155/ download/CLW/CCL/2020/EN/20200914_000033843.doc?ap p=caselaw&casenum=000033843&trTypeDoc=NA) 2 EUIPO Decision on Cancellation No 39 873 C (Invalidity) (https://files.lbr.cloud/public/2021-05/banksy%20monkey%20 trademark%20cancellation.pdf) 3 Banksy sets auction record with £18.5m sale of shredded painting, Nadeem Badshah, The Guardian, 14 October 2021 (https://www.theguardian.com/artanddesign/2021/oct/14/ banksy-auction-record-shredded-painting-love-is-in-the-bin) 4 29/01/2020, C 371/18, SKY (https://curia.europa.eu/juris/ liste.jsf?num=C-371/18&language=en) 5 EUIPO Decision on Cancellation No 33 843 C (Flower Thrower), page 10 | 6 Ibid, page 10 | 7 Ibid, page 11 7 06/09/2018, C-488/16 P, NEUSCHWANSTEIN, EU:C:2018:673 | 9 EUIPO Decision on Cancellation No 33 873 C (Monkey Sign), page 13 57 NOV 2021 | WWW.LAWYER-MONTHLY.COM INTELLECTUAL PROPERTY - LESSONS LEARNED FROM THE CANCELLATION OF BANKSY TRADEMARKS turn argued that Banksy allowed the free downloading of his work and that their use of his work on goods was only decorative, rather than trademark use. They further flagged that Banksy had not given any evidence of licenses granted in relation to his work and that he was being selective on who could use his work, which had already been widely photographed and disseminated andwas in use as decoration for a wide variety of items produced by third parties, including merchandise and posters. The trademark could not therefore fulfil the basic function of distinguishing the source of goods. Banksy further sought to rely on the decision in the Neuschwanstein case , which stated that a party who registers a trademark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith . However, the EUIPO firmly rejected that Banksy was pursuing a legitimate objective with his trademark registration and distinguished his case from Neuschwanstein, which involved commercial use. Conclusion The EUIPO made a particularly critical point of highlighting that Banksy works through the medium of graffiti, although it is not quite clear why it should make a difference that his art is produced on the sides of buildings in public spaces rather than on canvas. However, where Banksy’s argument does (at least for now) fall down is that neither copyright law nor trademark law allow him to succeed with the balancing act of asserting (and profiting from) anonymity while at the same time seeking (if selectively) to protect his images in circumstances where this is properly the domain of copyright law in the absence of commercial use by the artist himself. While there is no requirement under EU trademark law for an applicant to have the intention to use the mark at the time of filing, an application can nevertheless be deemed to have been filed in bad faith if there is clearly no intention to use the mark and the application is filed to obtain exclusivity for purposes other than those falling within the function of a trademark. While we may sympathise with the non-conformist struggle for seeking protection through the legal system, while at the same time rejecting it, there are plenty of examples of other artists successfully using trademarks to protect their artworks, often in conjunction with copyright, to protect both their creative as well as their commercial rights. While Banksy may believe that “copyright is for losers”, he has not yet found a winning formula for protecting his artistic output. He will share that challenge with many other street artists who find themselves in a similar position. Equally importantly, to the extent that his trademark applications around the world are based on EU trademarks, there may well be trouble brewing elsewhere, too. We wonder whether he has considered registered design rights, at the risk of having to live with much shorter-term protection?