Background of the case:

On 7 February 2014, the following figurative EUTM (12575155) was applied before EUIPO:

The owner of the mark is Pest Control Office Limited, however, there is no doubt that the mark refers to one of the paintings of the well-known urban art artist BANKSY, graffiti that appears on the wall of the city of Bethlehem.

Subsequently, Full Black Colour Limited, hereinafter the applicant, filed a declaration of invalidity against the subject trademark on the grounds of bad faith (Article 59. 1, b) of the Regulation). The application was filed against all the goods and services registered. We will briefly sum up the arguments of the parties:

  1. Arguments of the applicant.

The applicant claims that the contested trademark is the exact reproduction of one of Banksy’s works of art, this being one of the most famous in his repertoire. The applicant has not made use of such trademark for the goods applied for, it has always been reproduced as a work of art.

As for the bad faith ground, it is alleged that the work subject to registration is a graffiti in a public place and that the registration of the EUTM is intended to prevent the use of a work of art. In short, it is argued that the applicant had no intention to use the sign as a trademark and that this would entail an abuse of rights and an act of bad faith.

  1. Arguments of the trademark owner.

The holder claims that in any event it has been proved the bad faith when applying for the trademark. He adds that indeed, there are works of art protected under copyright, which are registered as trademarks. In addition, it is duly justified that a third party (natural or legal person) acting on behalf of the individual, seeks protection of a sign as a trademark to prevent right´s infringements that shall prejudice the rights of the represented.

Moreover, it is invoked Article 11.1 of the Charter of Fundamental Rights of the European Union (Everyone has the right to freedom of expression. This right includes freedom of opinion and freedom to receive and impart information and ideas without interference by public authority and regardless of frontiers), on the grounds that a trademark rights cannot be restricted based on copyright protection.

EUIPO decision (Cancellation Division)

The Office emphasizes that most of the arguments submitted by the parties have an obvious connection with Banksy, however, the owner of the mark who is the subject of this cancellation is someone else (who undoubtedly has a relationship with Banksy, this being his representative due to the artist’s wish to preserve his anonymous identity and therefore the enforcement of the trademark rights is carried out in the interests of the latter).

It should be noted that the purpose of the mark is to enable consumers to identify the commercial origin of the goods and services, whereas the purpose of copyright is, inter alia, to protect the various types of work. In the present case, Banksy did not wish to bring an action or make use of his copyright, since he preferred to remain anonymous as an author.

However, contrary to what the applicant claims, the Office does not dispute the fact that Banksy’s works may or may not be registered as trademarks merely because they may be protected by copyright, nor does it dispute Banksy’s policy of allowing third parties to use its works (provided that it does not have a commercial purpose) or of not marketing products with those works. This, however, has an impact in the field of trademark law.

The Office states that, according to well-known case-law, bad faith exists if the proprietor of the trade mark had no intention to use the sign in the course of trade in relation to the goods and services registered, contrary to good practice and the interests of third parties. Based on the evidence provided, it has not been proved that Banksy has made use of the mark in respect of the designated goods since the application date.

Finally, it is pointed out that the contested mark appears to be intended to remedy the lack of protection of Banksy’s Copyrights, since those cannot be enforced because of the prevalence of its anonymous authorship, which is indeed not the function of a trade mark.

In short, the trademark is declared invalid in all the classes registered.

Decision of the Cancellation Division of the EUIPO (Case 33843C) of 14 September 2020