CANCELLATION No C 40 000 (INVALIDITY) 

 

Full Colour Black Limited, Bambridge Accountants, 44 Maiden Lane, Covent Garden, WC2E 7LN London, United Kingdom (applicant), represented by Blaser Mills, 119 High Street, HP7 0EA Old Amersham, Buckinghamshire, United Kingdom (professional representative)

 

a g a i n s t

 

Pest Control Office Limited, International House 2-4 Maddox Street, W1S 1QP London, United Kingdom  (EUTM proprietor), represented by Dolleymores, 9 Rickmansworth Road Watford, Hertfordshire WD18 0JU, United Kingdom and Sodema Conseils S.A., 16 rue du Général Foy, 75008 Paris, France (professional representatives).

On 19/06/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 17 981 624 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

 

REASONS

 

On 30/11/2019, the applicant filed a request for  a declaration of invalidity against European Union trade mark No 17 981 624   (figurative mark) (the EUTM), filed on 07/11/2018 and registered on 08/06/2019. The applicant invoked the ground of bad faith under Article 59(1)(b) EUTMR and also the ground of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c) and (d) EUTMR. The request is directed against all the goods and services covered by the EUTM, namely:

 

Class 9: Sunglasses; glasses cases; pre-recorded discs, tapes and other media bearing music and other material relating to art and youth culture; pre-recorded discs, tapes and other media bearing films; pre-recorded discs, tapes and other media bearing electronic images; computer software relating to art and youth culture; computer games for entertainment purposes; downloadable publications; downloadable books, magazines and journals; downloadable films; downloadable music; downloadable sound recordings; downloadable image files; downloadable digital photos; downloadable multimedia files; downloadable wallpapers for computers and phones; application software; covers and cases for mobile phones; covers and cases for tablet computers; electronic photo albums; parts and fitting for all the aforementioned.

Class 16: Printed matter; stationery; photographs; posters; books; stencils; artists' materials; arts, crafts and modelling equipment; paint brushes; paper; art paper; canvas; pads; notebooks; journals; Artists easels; mounts of paper for pictures; art mounts; photograph mounts; cardboard picture mounts; pictures, prints of pictures, framed pictures; mounts for pictures; paintings; reproductions of paintings; fine art prints; drawings; etchings; collages; works of art; printed publications; cards; place mats; coasters; albums; stickers; decalcomanias; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; figurines; binders; book marks; boxes; calendars; gift tags; decorations; catalogues; programmes; magazines; periodicals; signboards; teaching materials; printed awards; parts and fittings for all the aforementioned.

Class 25: Clothing, footwear and headgear.

Class 28: Games, toys and playthings; gymnastic and sporting articles; decorations for Christmas trees; festive decorations; parts and fittings for all the aforementioned.

Class 41: Education and training services; entertainment; cultural activities; art exhibitions; art gallery services; rental of artwork; mural art painting services; modelling services for artists; non-downloadable electronic publications; provision of non-downloadable videos and films; providing on-line non-downloadable pictures; providing on-line non downloadable images; on-line publication of electronic books, magazines and journals; providing on line music, not downloadable; providing online non-downloadable audio content; providing on line computer games; organisation of competitions and contests; organising and conducting exhibitions, conferences, seminars, workshops, lectures, webinars, festivals, performances, shows; organisation, hosting and issuing awards; publishing services; information, advisory and consultancy services relating to all the aforementioned.

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The case for the applicant

The applicant argues that the mark for which protection has been sought and obtained is the exact reproduction of one of the works of the street artist Banksy, and the registered proprietor is the corporate body which deals with the matters of Banksy. The reproduction is of one of the most famous of his works, and it is also a work which has been reproduced by a large number of third parties as decoration for items of merchandise and as the subject matter of “media carriers” such as posters and graphic works. The proprietor has made no use of the mark, its activities preclude such activity and Banksy has only ever reproduced the work as a work of art. The applicant mentions that it has already applied to invalidate a related EUTM No 12 575 155 under the invalidity case number 33 843 C and is filing other related invalidity applications also and that these submissions are broadly similar to those in the 33 843 C. There are also broader issues regarding the monopolisation of art works via trade marks, the question of collateral purpose, and the question of whether it is acceptable to seek registration of the trade mark in light of the factual situation known to the registered proprietor at the time of the registration.

In regards to the ground of bad faith the applicant extensively lays out the law in relation to this ground. It claims that the work which is the subject matter of the registration is a work of graffiti sprayed in a public place. It was free to be photographed by the general public and has been disseminated widely. Banksy permitted parties to disseminate his work and even provided high-resolution versions of his work on his website and invited the public to download them and produce their own items. In his book, ‘Wall and Piece’, Banksy stated that ‘copyright is for losers’ and that the public is morally and legally free to reproduce, amend and otherwise use any copyright works forced upon them by third parties. Banksy has known for years that his works are widely photographed and reproduced on a massive and widespread scale by a range of third parties without there being any commercial connection between these parties and Banksy. Furthermore, he has known that the specific goods and services for which he has obtained registration comprise or include the items which have been the subject matter of this extended and extensive trade. Banksy does not use any of the images for which registration has been sought, including the mark in suit, as a trade mark. The present application forms part of a series of filings which constitute an attempt to monopolise images on an indefinite basis contrary to provisions of copyright law. Until recently, Banksy has not brought formal proceedings against any parties. The registration of the trade marks avoids evidential burdens relating to allegations of copyright infringement and relating to the acquisition of registered trade marks in the United States of America. There has been a pattern of registering (or applying to register) established works of Banksy as EU trade marks and register the corresponding mark in the US as a trade mark claiming the EU rights as basis for obtaining registration. Banksy, via his representatives, has expressed that the registrations were not intended to be used and have concocted sham efforts to try and mislead the EUIPO into believing that there was such an intent. Therefore, the applicant claims that the sole purpose of registering the EUTM was to prevent the ongoing use of the work which he had already permitted to be reproduced. It argues that this fact as well as the fact that the purpose of the registration was to circumvent copyright law or the provisions of the US trade mark law, shows that the filing was done in bad faith. The applicant also puts forwards arguments in relation to the other grounds of invalidity on which the application is based.

In reply to the proprietor’s arguments the applicant claims that the proprietor has not put forward a positive case but rather has merely attacked the applicant’s evidence. It admits that it is up to the applicant to prove its case but it claims that it is up to the proprietor to disprove the claim through evidence. The applicant claims that the evidence submitted by the proprietor attempts inter alia to show that human memory is fallible, it is possible to alter product images on Amazon and that the ‘rule of law’ applies without discrimination. It denies that these arguments can allow the proprietor to succeed. It contests the proprietor’s arguments. It points out that the proprietor criticises and puts in doubt the applicant’s evidence but relies on its own evidence as conclusive. It points out that the fact that the proprietor allowed the free downloading of his work to use for non-commercial purposes results in the works being placed on all manner of goods and this fact cannot lead to the goods being identified as coming from a single source. The applicant insists that the use of the works of Banksy on goods is merely decorative rather than trade mark use. It also claims that the proprietor has not submitted any evidence of permissions or licenses granted for the use of its sign by others. It denies that the application for invalidity is unsubstantiated and does not apply to the relevant period at issue. It also claims that the proprietor has misrepresented some of its arguments.

It argues that Banksy, represented by the proprietor, was aware from at least as early as 2007 that his works were being reproduced on a massive scale without any of it being under his control. In his book ‘Wall and Piece’ Banksy suggests that anything depicted in public is free for use by all and permission is not required. Although Banksy states on his website that other companies were using his sign without his permission for commercial purposes the proprietor has not submitted any evidence that he sought to defend against this. The applicant argues that the proprietor has not put forward a full and positive reason for its applications, nor did it suggest that it has, or ever had, an intention to use the image as a trade mark. It goes through each of the points of the proprietor and contests them.

In support of its observations, on 09/12/2019, the applicant filed the following evidence:

 Witness statement of A.R.W., Chartered trade mark attorney and partner at Keystone Law Limited.

 Exhibit ARW1: Articles which all bear a date of extraction of 05/03/2019, one indicates that it is news 2018 while another is dated 29/11/2018 and others are undated. They show the relationship between Pest Control (proprietor) and Banksy.

 Exhibits ARW2: Copy of the website of Pest Control Limited.

 Exhibits ARW3-5: Printouts of the proprietor’s website, articles relating to Banksy and his anonymity, his work and its value and his best known works, and an article from the Smithsonian website which shows a framed painting of the artwork of which the EUTM is comprised.

 Exhibit ARW6: An extract from myartbroker.com and other related articles regarding the artwork ‘Love Rat’ depicted as .

 Exhibit ARW7: Printouts of the Banksy website from the Wayback machine dated from 2007 to 2015, an extract from “Banksy-Wall and piece” published in 2005, an article dated 01/05/2018 discussing Banksy’s statement that ‘copyright is for losers’ and discussing the uncertain state of legal protection for street art and graffiti. Another article again discussing the ownership of graffiti works dated 21/02/2013. Extracts from an online forum indicating ’13 years ago’ but without any real date. A further article dated in 2017 written by a law lecturer in the UK discussing the issue of copyright in relation to graffiti and street art. An article from IP Kat dated in 2011 regarding Banksy’s disclaimer on his website allowing people to make merchandise using his artwork and stating that Banksy does not produce or profit from the sale of greeting cards, mugs or photo canvases of his work.

 Exhibits ARW8-16: Examples of Banksy’s use of third party copyrights in his works and images of articles being Banksy’s works used by third parties on goods in Classes 9, 16, 18, 24, 25, 27, 28 and for goods in other classes including use of the ‘Love Rat’ work.

 Exhibit ARW17: Details of the US application for the trade mark registration of the ‘Love Rat’ mark as represented in the current EUTM.

 Exhibit ARW18: Table of the proprietor’s EU and US applications and registrations.

 Exhibits ARW19-20: Excerpts from the USPTO practice.

 Exhibit ARW21: Copy of the decision of the Milan Court of 14/01/2019, 52442/2018 R.G. regarding Banksy in Italian and dated 14/01/2019 and some related articles discussing the Italian decision dated 25/02/2019 (2 articles), 28/02/2019 (extraction date 05/03/2019) and 26/02/2019, .

 Exhibit ARW22: Copies of news reports dated 01/10/2019 and 17/10/2019 showing the opening of the shop and webshop of the proprietor/Banksy called Gross Domestic Product which state that it was opened in order to show use to succeed in a trade mark dispute. Images of Banksy’s artwork on goods in the webshop and the new business dated 28/10/2019

 Exhibit ARW23: Evidence to identify Mr M.S. identified in the statements in the previous exhibit.

 Exhibit AWR24: An image of the Flower Thrower on a product in the webshop and the new business dated 28/10/2019.

 Exhibit ARW25: Extracts from the Companies House Register in the UK to show the connection between Mr. M.S. and the proprietor.

The case for the EUTM proprietor

The proprietor argues that the applicant has not submitted sufficient evidence to prove that the EUTM was filed in bad faith. Contrary to the claims of the applicant, this evidence does not demonstrate that Banksy has given free rein to the general public to use his copyright. There is no evidence that Banksy allowed even non-commercial use of the work but only for non-commercial use of the images. The arguments about the US registrations are not of relevance for the present purposes and the USPTO manual was incorrectly identified and misapplied by the applicant. There are many works of art that are registered as trade marks in the EU and the proprietor provides examples of same and argues that it is common practice to use these works are trade marks for commercial purposes. It contests the relevance of the decisions relied upon by the applicant or argues that the applicant has misapplied the findings of the judgments. It points out that the decision of the Italian Courts submitted by the applicant found in favour of the proprietor when the defendant applied the proprietor’s marks to its merchandise. It denies that the comments made by Banksy and a Director of the proprietor relating to a shop opened by Banksy or the extracts from the webshop of Banksy have any bearing on the trade mark or on these cancellation proceedings.

It denies the applicant’s argument that it applied for a US registration in a dishonest way and puts forward that it is completely legal and a commonly relied on basis by many foreign companies to register in the US. The proprietor submits examples of numerous artworks which have been filed as trade marks in the EU. It claims that this shows that it is common practice for artists and companies to register their artwork, both famous and unknown, as trade marks for use and protection for commercial purposes and this shows that it did not file the EUTM in bad faith. It relies on the judgments of 29/01/2020, C 371/18, SKY, EU:C:2020:45, § 74-78 and of 06/09/2018, C-488/16 P, NEUSCHWANSTEIN, EU:C:2018:673, § 82-84 to state that a party that registers a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith. It argues that where a party is taking advantage of a sign due to their knowledge that the owner of the sign cannot enforce unregistered trade mark rights and copyright without prejudicing his public persona or business interests, obtaining a trade mark registration through an incorporated company in order to enforce these rights is a ‘legitimate objective’ and not an application in bad faith.

In reply to the applicant’s arguments the proprietor denies that public access to a sign and wide dissemination of a sign is not a bar to registration as if so then no unregistered trade mark could be registered. The applicant has not provided any evidence showing that Banksy or the proprietor has allowed others to use or disseminate the image in the trade mark. Banksy’s statements neither change the law nor prohibit him or the proprietor from seeking rights and protections available under the law. An anti-establishment viewpoint does not prevent a party from utilising establishment mechanisms in order to further their view. The applicant has not provided any evidence showing that, at the relevant date, Banksy was aware of any more than one isolated occurrence of his work being used. The applicant’s evidence shows instead that Banksy placed a warning on his website in an attempt to prevent the public from believing the goods were connected to him. The applicant is under an obligation to show that the proprietor acted in bad faith at the relevant date, which it denies that it has. Banksy’s copyright lasts for his lifetime plus 70 years, whereas, a trade mark can be cancelled on the basis of non-use revocation if it has not been put to genuine use as a trade mark for a continuous period of 5 years. As such, the trade mark can only be monopolised indefinitely if it is put to genuine use as a trade mark and, if not, will be vulnerable to cancellation long before the copyright protection ends. Whilst the US registrations are facts, the applicant has not provided any evidence to show that these were made in bad faith.

The proprietor contends that the applicant’s evidence relate to Banksy and his fame and not to the works or the trade mark. There is no evidence that it has contravened accepted principles of ethical behaviour or honest commercial and business practices.

The applicant’s arguments regarding the fame of Banksy should be disregarded as they are flawed and incorrectly apply the law and are contrary to the principals established in the Article 20 of the Charter of Fundamental Rights of the EU, which states that everyone is equal before the law, and Article 11.1, which states that everyone has the right to freedom of expression which includes the freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers. The proprietor cannot lose the right to file a trade mark for his work because he had previously made statements that copyright is for losers. The proprietor also submitted detailed observations in relation to the other grounds of invalidity.

In support of its observations, the EUTM proprietor filed the following evidence:

Evidence submitted on 18/05/2020 and 19/05/2020:

 Exhibit PCO1: UK High Court decision in Gestmin v Credit Suisse [2013] EWHC 3560.

 Exhibit PCO2: Article explaining how listings on Amazon are being hijacked and Amazon Seller Central page containing instructions on how to amend an Amazon listing.

 Exhibit PCO3: USPTO practice manual for an application under Section 44 and based on a prior foreign registration.

 Exhibit PCO4: A selection of EUTM registrations for a variety of artworks (fine art, pop art, cartoon, design) from a number of artists such as Andy Warhol, Keith Harling, the incorporated companies which have registered the works, the goods on which they are used (either directly or through licensing), and the art either exhibited or for sale.

 Exhibit PCO5: A copy of the Charter of Fundamental Rights of the EU as made legally binding by the Treaty of Lisbon.

Preliminary remarks

On 04/08/2020 the proprietor was invited to submit observations in reply to the applicant on or before 09/10/2020. The proprietor requested two extensions of the time limit, the second one extended the time limit in which the proprietor had to submit observations in reply by 23/12/2020. On 22/12/2020 the proprietor requested a third extension of the time limit. On 10/03/2021 the Office informed the proprietor that under the new and more considerate approach regarding extensions of time limits as detailed in the ED decisions: Decision No EX-20-3 and Decision No EX-20-4 ; and the COVID-19 – Guidance Note on time limits after end of extension period available on www.euipo.europa.eu the original time limit was already extended twice, until 23/12/2020, before the proprietor subsequently requested a further extension of the time limit. It was informed that in such a case the Office could have granted it only an extension of two additional weeks, that is until 06/01/2021. However, during that period the proprietor did not submit any observations nor did it submit any further request for extension of the time limit or other justification. Therefore, it informed the proprietor that the observations submitted on 21/02/2021 could not be taken into account as they were not received within any possible time limit in accordance with Article 17(2) EUTMDR. As such these observations and the evidence will not be taken into consideration for the present purposes.

The proprietor has called into question the actions of the Office in refusing this extension of the time limit. However, the above mentioned Decisions and Guidance note, along with the Office’s Trade mark guidelines, Part C Opposition, Section 1 Opposition proceedings, Point 7.2 Time limits which apply by analogy to the present invalidity proceedings. Therefore, the proprietor’s arguments in this respect must be set aside.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR

General principles

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Assessment of bad faith

The ground of bad faith applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark filed its application for registration without any intention of using the contested EUTM, or without the aim of engaging fairly in competition, but with the intention of undermining the interests of third parties, in a manner inconsistent with honest practices, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin (12/09/2019, C-104/18 P, STYLO & KOTON (fig.), EU:C:2019:724, § 46 and 29/01/2020, C 371/18, SKY, EU:C:2020:45, § 81).

Much of the evidence and arguments refer to Banksy and not the proprietor who applied for the EUTM. The Cancellation Division considers that the evidence submitted by the applicant shows that there is a connection between Banksy and the proprietor, who would appear to be the legal representatives of Banksy.

The term ‘applicant’ in Article 59(1)(b) EUTMR has to be construed as meaning the person applying for the EUTM in its own name, the principal of an agent acting in the name of its principal or any person instructing a nominee to act in its (the nominee’s) own name, but who, according to an arrangement between them, merely serves the interests of the former, while acting in good faith and being unaware of the former’s bad faith (13/12/2004, R 582/2003 4, EAST SIDE MARIO’S, § 17 18).

The proprietor is the representative of Banksy, probably due to his wish to stay anonymous, and therefore the proprietor’s filing of the EUTM would have been carried out in the interests of Banksy. The proprietor argues against the false narrative of Banksy as an individual as what is relevant is the corporate intention of the proprietor when filing the application. However, for the reasons outlined above, the filing by this company is filing by an agent for the principal or by a nominee.

The purpose of a trade mark is to allow consumers to identify the commercial origin of the goods or services at issue and distinguish these goods or services from those of other companies. The purpose of a trade mark is not to prohibit others from registering or using signs which the applicant for invalidity is not using to identify goods and services in order to carve out a portion of the commercial market.

The purpose of a copyright is inter alia to protect different kinds of original artistic works. A painting or street art could therefore, when the necessary conditions are met, be covered by copyright protection.

In the present case, the artwork in question is referred to in the witness statement of A.R.W as ‘Love Rat’, and refers to the work of art as shown below:

Exhibit ARW5 contains inter alia an online article from the Smithsonian with an image of this work of art ‘Love Rat’. As can be seen from Exhibit ARW6, this piece of art was initially a graffiti placed in Liverpool and later reproduced in 2004 with 150 signed and 600 unsigned prints. This exhibit also contains printouts from other websites showing the print or the actual artwork where the graffiti was placed.

It is noted that as Banksy has chosen to be anonymous and cannot be identified this would hinder him from being able to protect this piece of art under copyright laws without identifying himself, while identifying himself would take away from the secretive persona which propels his fame and success.

As mentioned above, the evidence submitted by the applicant shows that there is a connection between Banksy and the proprietor, who would appear to be the legal representatives of Banksy, but, again, it must be noted that the evidence is not exhaustive in this regard as the identity of Banksy cannot be legally determined. Therefore, it would be quite difficult for Banksy though his representatives, the proprietor, to actually enforce copyright rights against third parties. As such, at least without exposing his true identity, it would be difficult for Banksy to rely on any copyright rights to the sign.

Copyrights have a fixed duration of protection in the EU, being for the lifetime of the creator plus an additional 70 years from their death. Therefore, these rights are exhaustive. However, a trade mark can last indefinitely if renewed. The proprietor argues that there is an exception to this indefinite duration of a trade mark and it would be where the proprietor of the mark does not put the mark to genuine use for the goods and services for which it is registered, which is indeed correct. However, the fact still remains that potentially, with use, a trade mark can extend the length of time of protection of a work and therefore, it is capable of circumventing any such limitations of a copyright. Moreover, to be revoked, an EUTM must be attacked though an application for revocation, therefore there is no automatic ceasing of protection when not used.

The proprietor also argues that arguments or evidence in relation to its ownership of copyright are not relevant to the present application which only relates to trade marks. However, the Cancellation Division cannot agree with this as this information is relevant in considering the proprietor’s intention at the time of filing for the trade mark. Therefore, this argument must be set aside.

The proprietor points out that there are a number of famous works of art that have been registered as EUTMs and which were not precluded from being registered due to having pre-existing copyrights. The Cancellation Division, without commenting on whether famous works of art are also registrable, which is argued under Article 7(1)(b) and (c) in the application, merely notes that copyrights and trade marks in general do not have to be mutually exclusive and that these two types of rights have different remedies. However, in the present application for a declaration of invalidity based on bad faith the case must be examined in detail to see the circumstances that lead to the filing and the proprietor’s intentions in filing the trade mark.

The proprietor argues that Article 20 of the Charter of Fundamental Rights of the EU states that everyone is equal before the law and that Article 11.1 states that everyone has the right to freedom of expression, which includes the freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers. Again this is correct, however, where a trade mark has been filed in bad faith the proprietor would not have a right to own such a sign as it would fall foul of Article 59(1)(b) EUTMR which protects against such circumstances. A proprietor cannot gain rights from a sign that is filed in bad faith. Like in many other situations, personal rights and freedoms can be curtailed when other laws are infringed or broken and, therefore, also this argument of the proprietor must be set aside.

The applicant has provided in Exhibit ARW7 printouts from the internet archive site of the Wayback Machine for Banksy’s webpage dated prior to the filing of the EUTM. Banksy made clear statements that he gave his express permission for the public to download and use its works of arts as they wished, with the exception that it was not used for commercial purposes. The proprietor argues that this clearly shows that Banksy reserved the exclusive commercial right for himself under the exploitation of his trade marks. However, Banksy also acknowledged on his webpages from at least 2007 that he was aware of the use of this work by third party companies to commercialise goods and denied that this was done with his permission, but did not take any form of legal action to prevent these actions. It argues that it can consent or license copyright to others but the evidence does not show that he had licensed any copyright and he specifically states that the use made thereof was without his consent on the website. Therefore, from the evidence submitted it is not clear that Banksy was trying to preserve or use any possible trade mark rights and this argument must be set aside.

The proprietor argues that the evidence submitted by the applicant to show use of the sign by other parties is not all dated in the correct period. The applicant has submitted some evidence dated prior to the filing date (some dated a long time before) and also evidence after the filing date and up to and around the time of filing of the present application for a declaration of invalidity. The relevant point in time to show bad faith is the date of filing of the contested EUTM. However, evidence prior to and after that date can also be relevant if it can show the proprietor’s intention for filing the mark, so this argument must be set aside. The proprietor also argues that webshops in Amazon.com can be altered or modified and that some parties obtain other parties’ webshops so that they can inherit positive reviews and seem more legitimate. The proprietor has not submitted proof that this has occurred with any of the evidence submitted by the applicant and therefore these documents must be assumed to be correct. To accept such an argument to discredit this evidence would result in every piece of evidence submitted being called into question as most evidence is online evidence in the present day. Therefore, this argument must also be rejected. The applicant’s evidence shows that many different companies were using the sign to commercialise goods prior to, close to the time of filing and thereafter and that the proprietor, in its representation of Banksy, was aware of this fact and did nothing to stop them.

From an examination of the evidence filed by both parties it would appear that, at the time of filing of the application for invalidity, the proprietor (or Banksy) had never actually marketed or sold any goods or services under the contested EUTM. Moreover, some of the proprietor’s webpage extracts dated in 2010-2011 state that ‘All images are made available to download for personal amusement only, thanks. Banksy does not endorse or profit from the sale of greeting cards, mugs, t-shirts, photo canvases etc. …’, ‘Banksy does not produce greeting cards or print photo-canvases….Please take anything from this site and make your own (non-commercial use only thanks)’ and ‘Banksy has never produced greeting cards, mugs or photo canvases of his work’. Therefore, there is no evidence that Banksy was actually producing, selling or providing any goods or services under the contested sign prior to the date of filing of the contested EUTM.

The first evidence of sales appears to have happened just before the date of filing of the present application for a declaration of invalidity. There are a number of articles from some notable publications in the UK dated in October 2019 in Exhibit ARW22 which speak of the opening of a Banksy shop which would not be opened to the public, but the public could look at the window displays and buy the products online, after a vetting procedure to ensure that they were not going to re-sell the items and were not art dealers. In these publications Banksy is accredited to saying that ‘the motivation behind the venture was “possibly the least poetic reason to even make some art” – a trademark dispute’. An article also quotes Mr. M.S. (the applicant has shown that he is a Director of the proprietor and also self-proclaimed legal advisor of Banksy) as saying ‘Banksy is in a difficult position…Because he doesn’t produce his own range of shoddy merchandise and the law is quite clear – if the trademark holder is not using the mark, then it can be transferred to someone who will…(Mr. M.S) proposed that Banksy begin his own range of merchandise and open a shop as a solution to the issue….’. In the same article Banksy says ”Sometimes you go to work and it’s hard to know what to paint, but for the past few months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law” and admitted that the subject matter is “not a very sexy muse”. The article points out that the windows display his works. The article concludes that ‘Banksy stresses that, despite trying to defend his rights in this particular case, he has not changed his position on copyright. “I still encourage anyone to copy, borrow, steal and amend my art for amusement, academic research or activism. I just don’t want them to get sole custody of my name”. The shop is called ‘Gross Domestic Product’ and the applicant also submitted an extract of the webpage of the shop dated 28/10/2019, in which it also encourages the copying, borrowing and uncredited use of Banksy imagery for amusement, activism and education purposes and to make merchandise for personal entertainment and non-profit activism for good causes, but not for passing them off as authentic and re-selling them.

From the evidence submitted Banksy has not manufactured, sold or provided any goods or services under the contested mark or sought to create a commercial market for his goods until just before the filing of the present application for a declaration of invalidity. Only then, in October of 2019 (one month prior to the filing of the present application for invalidity), after the applicant had brought the prior proceedings 33 843 C against the proprietor, as referred to by the applicant in its initial observations, which were pending at the time, he opened an online store (and had a physical shop but which was not opened to the public). However, by his own words, reported in a number of different publications in the UK, he was not trying to carve out a portion of the commercial market by selling his goods, he was merely trying to fulfil the trade mark class categories to show use for these goods to circumvent the non-use of the sign requirement under EU law. Both Banksy and Mr. M.S, who is a Director of the proprietor, made statements that the goods were created and being sold solely for this cause. Therefore, by their own words they admit that the use made of the sign was not genuine trade mark use in order to create or maintain a share of the market by commercialising goods, but only to circumvent the law.

The contested EUTM was filed on 07/11/2018. The evidence shows that the proprietor did not sell any goods or provide any services under the sign or at all until October 2019. In fact the evidence shows that Banksy repeatedly made statements that he was not making or selling any of these goods and that the third parties were doing this without his permission. Banksy started to sell goods in late 2019 only one month prior to the filing of the present application but specifically stated that they were only being sold to overcome non-use for trade mark proceedings and not to commercialise the goods. However, there are restrictions to the right to register a trade mark and that would be in the case where the mark is filed in bad faith.

The concept of bad faith referred to in Article 59(1)(b) EUTMR is an autonomous concept of European Union (EU) law, which must be given a uniform interpretation in the EU (preliminary ruling of 27/06/2013, C-320/12, Malaysia Dairy, EU:C:2013:435). However, it is not defined, delimited or even described in any way in the legislation.

Advocate General Sharpston proposed to define it as a ‘conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices’ (opinion of Advocate General Sharpston of 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:148, § 60).

Article 59(1)(b) EUTMR meets the general interest objective of preventing trade mark registrations that are abusive or contrary to honest commercial and business practices. These registrations are contrary to the principle that EU law cannot be extended to cover abusive practices on the part of a trader, which do not make it possible to attain the objective of the legislation in question (23/05/2019, T-3/18 & T-4/18, ANN TAYLOR / ANNTAYLOR et al., EU:T:2019:357, § 33).

Bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM, for example, a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. (29/01/2020, C 371/18, SKY, EU:C:2020:45, § 81).

The predicament of Banksy’s right to the work ‘Love Rat’ is clear. To protect the right under copyright law would require him to lose his anonymity which would undermine his persona. It is clear that when the proprietor filed the EUTM he did not intend to use the EUTM and actual use was only made of the EUTM, after the initiation of the previous proceedings No 33 843 and approximately one month prior to the filing of the present proceedings, and such use was identified as use to circumvent the requirements of trade mark law and thus there was no intention to genuinely use the sign as a trade mark. Banksy was trying to use the sign only to show that he had an intention of using the sign, but his own words and those of his legal representative, unfortunately undermined this effort. Thus, it must be concluded that there was no intention to genuinely use the sign as a trade mark and the only eventual use made of the sign was made with the intention of obtaining an exclusive right to the sign for purposes other than those falling within the functions of a trade mark.

The proprietor also relies on the judgment of 06/09/2018, C-488/16 P, NEUSCHWANSTEIN, EU:C:2018:673, § 82-84 to state that a party that registers a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith.

The judgment states at paragraph 83 the following:

In that judgment, to which the General Court refers in paragraph 58 of the judgment under appeal, the Court held, in essence, regarding the intention of the applicant at the time of filing the application for registration of an EU trade mark, that, even in a situation where that applicant files an application for registration of a sign with the sole aim of competing unfairly with a competitor who is using a similar sign, it cannot be excluded that the applicant’s registration of the sign may be in pursuit of a legitimate objective. The Court specified that that could be the case, in particular, where the applicant knows, when filing the application for registration, that a third party, who is a newcomer in the market, is trying to take advantage of that sign by copying its presentation, and the applicant seeks to register the sign with a view to preventing use of that presentation (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 47 to 49). Accordingly, it is not apparent from that judgment that the assessment of bad faith must necessarily take the means used to achieve such an objective into account.

However, the above reasoning could not apply in the present case as Banksy was not using the sign as a trade mark and did not have a legitimate objective in this regard. He had no intention of using the sign and was allowing the public to download and use it as they wished, with the exception of commercial use, but he did not want anyone else to use the sign which is in the public domain and for which no clear copyright can be identified.

In the recent 2020 judgment in SKY (cited above) the Court found the following:

“74 The Court has held that in addition to the fact that, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, regard must be had, for the purposes of interpreting that concept, to the specific context of trade mark law, which is that of the course of trade. In that regard, the EU rules on trade marks are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).

75 Consequently, the absolute ground for invalidity referred to in Article 51(1)(b) of Regulation No 40/94 and Article 3(2)(d) of First Directive 89/104 applies where it is apparent from relevant and consistent indicia that the proprietor of a trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the previous paragraph of the present judgment (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).

76 Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of 5 years for beginning actual use consistent with the essential function of that trade mark (see, to that effect, judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?), C‑541/18, EU:C:2019:725, paragraph 22).

77 However, as the Advocate General observed in point 109 of his Opinion, the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 40/94 and First Directive 89/104. Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.

78 The bad faith of the trade mark applicant cannot, therefore, be presumed on the basis of the mere finding that, at the time of filing his or her application, that applicant had no economic activity corresponding to the goods and services referred to in that application.”

…….

81      In the light of the foregoing, the answer to the third and fourth questions is that Article 51(1)(b) of Regulation No 40/94 and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, within the meaning of those provisions, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services.

The proprietor argues that the Sky decision (cited above) confirms that, unless the contrary can be demonstrated by contemporaneous evidence at the date of filing, the proprietor’s intention to use the mark as a trade mark is evidenced through the filing of the application. It further argues that even with contemporaneous evidence the test for proving the applicant’s intent is strict and the evidential bar that the cancellation applicant must reach to satisfy the test is high. It further claims that it is up to the applicant to prove bad faith and that from the evidence submitted there are no consistent indicia of bad faith.

The applicant must indeed make its case for bad faith, which the Cancellation Division considers it has done, as such, the proprietor must show that it had a legitimate reason for filing the mark. The evidence, as stated before in the present decision, should show the proprietor’s intentions at the time of filing of the EUTM, however, evidence of before or after this time period may also be taken into account if it can show or confirm the intention of the proprietor at the time of filing. The applicant’s evidence clearly shows the proprietor’s (Banksy’s) intentions from around 2007 up to the time of filing and thereafter. Therefore, it was up to the proprietor to show that it had legitimate reasons to apply for the sign. In this regard the Court has recently stated in its judgment of 21/04/2021, T-663/19, MONOPOLY, EU:T:2021:211, § 43 the following:

Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark.

In this respect the proprietor claims that where a party is taking advantage of a sign due to their knowledge that the owner of the sign cannot enforce unregistered trade mark rights and copyright without prejudicing his public persona or business interests, obtaining a trade mark registration through an incorporated company in order to enforce these rights is a ‘legitimate objective’ and not an application in bad faith. However, as Banksy is anonymous, he cannot be clearly identified as the unquestionable owner of the copyright over such works, as his identity is hidden. The contested EUTM was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that is not a function of a trade mark. Therefore, the filing of a trade mark cannot be used to uphold these rights which at least may not exist for the person claiming to own them.

Moreover, applying the above cited judgment and the previous findings it is clear that Banksy did not have any intention to use the EUTM in relation to the contested goods and services at the time of filing of the EUTM which is the relevant time period to be taken into consideration. He only began using the sign after the previous application for a declaration of invalidity 33 843 C was filed and only one month prior to the filing of the present application. Moreover, at the time of said use Banksy and his representative stated that the use was only to overcome EU laws regarding the issue of non-use in relation to a trade mark dispute which shows that his intention was not to use the mark as a trade mark to commercialise goods or provide any services in order to carve out a portion of the relevant market, but only to circumvent the law. These actions are inconsistent with honest practices. They show that his intention was to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. Although the proprietor also states that he intends to make genuine use of the EUTM in the coming years what must be examined in the present application is the proprietor’s intention at the time of the application of the contested mark.

Following from the case law cited above bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM or if the intention in filing the EUTM was to obtain an exclusive right for purposes other than those falling within the functions of a trade mark. Therefore, for the reasons given above the proprietor’s actions are inconsistent with honest practices as it had no intention to use the EUTM as a trade mark according to its function and thus the EUTM was filed in bad faith. This finding is also in line with the decision of the Cancellation Division of 14/09/2020, 33 843 C in the ‘Flower Thrower’ decision which has become final. Moreover, the filing of other marks under the same circumstances is a strong indication that the present mark was also applied for in bad faith (see, for analogy, 25/02/2013, No R 2448/2010, ‘AERMACCHI MILANO’, § 22).

The parties also made arguments in relation to the US law and the proprietor’s using of the EUTM to file US trade marks. However, as the application for bad faith is fully successful as laid out above, and for reasons of procedural economy, the Cancellation Division will not comment on these arguments as they will not affect the outcome of the present decision.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services.

The application for a declaration of invalidity is also based on the grounds of Article 59(1)(a) EUTMR in conjunction with Articles 7(1)(b) and 7(1)(c) EUTMR. However, as the application is fully successful as based on the ground of bad faith under Article 59(1)(b) EUTMR, the Cancellation Division will not examine the request as based on these additional grounds or the arguments and evidence submitted in relation thereto, as said examination will not affect the outcome of the present decision.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ioana MOISESCU

Nicole CLARKE

Pierluigi M. VILLANI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.