Rosie Giannone is a 1L JD Candidate at Osgoode Hall Law School.
Image from the Decision of the Fifth Board of Appeal of 25 October 2022
EUTM 17981629 in the name of Pest Control Office Limited
The European Union Intellectual Property Office’s (EUIPO) Board of Appeal has reversed a EUIPO decision from May 2021, rendering invalid a trademark registration for Laugh Now, better known as the monkey sign image, by anonymous U.K. street artist Banksy.
Background
Banksy’s graffiti artwork Laugh Now first appeared in Brighton, England, in 2002. The work depicts an image of a monkey wearing a sandwich board around its neck, reading, “Laugh now, but one day we’ll be in charge.” Full Black Colour Limited, a U.K. company specializing in greeting cards depicting street art, subsequently used this image in their products.
On November 7, 2018, Pest Control, Banksy’s authentication body, filed an EU trademark claim on behalf of the artist for Laugh Now. Typically, artists protect their artwork using only copyright law. However, artists are required to reveal their identity when claiming copyright infringement. Trademark law allows Banksy to remain anonymous and maintain his mysterious artistic persona.
On November 28, 2019, Full Black Colour applied to cancel Banksy’s trademark under the European Union Trademark Regulation (EUTMR). Full Black Colour claimed that the work was “not distinctive enough and that the trademark had been registered in bad faith.” More specifically, Aaron Wood, a trademark lawyer, argued on behalf of Full Colour Black that Banksy never had any intention to use the trademark. A trademark holder must make “genuine use” of a registration by using it to acquire market share in relation to distinguishable goods or services. The EUIPO considered that Banksy only registered the trademark to prevent others from using his image and to avoid revealing his identity under copyright infringement claims.
On May 18, 2021, the EUIPO Cancellation Division ruled in favour of Full Colour Black. The decision repeatedly referenced a similar cancellation request by Full Colour Black in 2019, which challenged the registration of a trademark for Banksy’s work, The Flower Thrower. The EUIPO found that since the art is a work of graffiti originally spray-painted in a public place, “it was free to be photographed by the general public.” Furthermore, the Board accepted Banksy’s 2007 book Wall and Piece as damning evidence that this trademark was registered in bad faith. In the book, Banksy famously claimed that “copyright is for losers” and stated that “the public is morally and legally free to reproduce, amend, and otherwise use any copyright works forced upon them by third parties.”
The EUIPO also accepted that Banksy knew that his works were widely photographed and reproduced by third parties without the existence of a commercial connection between these parties and himself. The EUIPO noted that Banksy provided high-resolution versions of his work on his website and invited the public to download them. Essentially, the court found that merchandise displaying Banksy’s artwork was ubiquitous and that the artist had done nothing to prevent this. Ultimately, the EUIPO declared the trademark registration of Laugh Now invalid.
Appeal
On October 25, 2022, the EUIPO Board of Appeal reversed the Cancellation Division’s decision, ruling that Banksy’s trademark registration for Laugh Now was not made in bad faith.
The Board found that the wide-scale commercial use of Banksy’s artwork had not been proven. Although Banksy makes his artwork available online for free downloading, he explicitly exempts these images from being used for commercial purposes.
Furthermore, the Board clarified that a work of art subject to copyright protection could also act as a trademark. Registering a trademark to prevent others from using one’s work does not amount to bad faith when the applicant is the legitimate owner.
Moreover, the Board notes that the trademark was cancelled only six months into Banksy’s five-year grace period. During this time, the rights-holder is not required to use their trademark. In this case, it was unfair for the Cancellation Division to assume that Banksy never intended to use the trademark or allow legitimate third parties to use it as licensees.
Finally, the Board reasoned that accepting Banksy’s statement that “copyright is for losers” as supporting a finding of bad faith contravenes the fundamental right of freedom of expression.
According to Lee Curtis, a trademark specialist, this case is a significant victory for Banksy and Pest Control, as it allows the artist to maintain his anonymity, contributing to his artistic success. Full Colour Black has brought invalidity proceedings against 7 of the 15 European Union Trademarks (EUTM) filed by Pest Control on behalf of Banksy. In 6 of these cases, the Cancellation Division invalidated the trademarks, finding that they had been filed in bad faith. To date, Laugh Now is the only case successfully appealed.
Full Colour Black has expressed disappointment with the outcome of the appeal, noting that it is out of line with the Board’s decisions thus far. However, the company has no plans to appeal the decision.
Ultimately, the Board of Appeal’s decision clarifies that a trademark should be presumed to have been registered in good faith unless proven otherwise, leaving Banksy the one laughing now.