EUIPO BoA annulled the cancellation relating to a trademark registration for a famous Banksy’s work

EUIPO BoA annulled the cancellation relating to a trademark registration for a famous Banksy’s work

The EUIPO Fifth Board of Appeal annulled, on October 25th, 2022, the Cancellation Division’s decision relating to a trademark registration for Banksy’s Laugh Now But One Day We’ll Be In Charge”. In the first instance, the cancellation was granted under the argument that the trademark had been applied in bad faith. The main allegations that would support bad faith argument would be that (i) Banksy and Pest Control Office Limited – the trademark owner and Banksy’s legal representative – never used and would not intend to use the work as a trademark; (ii) Banksy would have already publicly expressed the opinion that copyright was for “losers”; (iii) Banksy would only have sought trademark protection for his work to circumvent problems and limitations caused by the copyright institute. Such problems would be related to Banksy’s alleged need to reveal his identity to enforce his rights related to his works in infringement cases.

The Board of Appeal reversed the first instance decision and maintained the trademark registration based on the opinion that the bad faith was not demonstrated. The Board argued that the public statements of a party – copyright is for “losers” – cannot be taken into account in deciding whether a set of facts arise, since to do so would curtail their freedom of speech. Furthermore, the Board pointed that the fact that a sign represents an artwork that can be or could have been protected by copyright does not preclude the right of the owner to seek protection for his work as trademark. It was also noted that there is a 5-year grace period to which, in the present case, will expire in June 2024. This means that owner is free to choose within this 5 years grace period as to when it will start to genuinely use the trademark.

It can be inferred from the decision that what defines the protection of a good by intellectual property rights is the proof that the good or its use fulfills the requirements for such protection. Once the requirements have been verified and if the object of the right does not fall under any legal prohibition, the protection should be granted.