The Cancellation Division of EUIPO has recently decided on the invalidity of the European figurative trademark no. 18118853 having as object the famous Banksy work called “The Flower Thrower”.
Banksy’s “Flower Thrower” Trademark
The application for invalidity, based on the applicant’s bad faith as well as on the descriptiveness and/or non-distinctiveness of the sign at issue, was directed against all goods and services covered by the trademark. These included, among others, bags, clothes, toys and book publishing services.
With regards to the bad faith, the plaintiff claimed that the owner did not use the contested sign as a commercial trademark but had always and only reproduced it as a work of art. In brief, the owner had never had the intention to use it as a trademark, which is why the same should not have been object of an application for registration.
The plaintiff also assumed that the trademark at issue was nearly identical to an earlier trademark susceptible to cancellation for non-use, with the exception of certain new goods and services. The contested trademark should be considered as a repeat application, purely aimed at avoiding the cancellation of the trademark, and therefore, an invalid trademark pursuant to art. 59(1)(b) EUTMR as filed in bad faith.
According to the plaintiff, the trademark registration had the goal of eluding copyright law. As matter of fact, with this registration, Banksy tried to indefinitely monopolize the image (which in line with the trademark regulation that allows the renewal of the title without time limits) contrary to the law disposition on copyright.
As for the invalidity ground relating to descriptiveness and/or non-distinctiveness of the sign, the plaintiff claimed that the sign object of registration would not have been perceived as a commercial trademark but, otherwise, as a mere work of art.
In contrast, the owner argued that at the time of the filing of the application for registration there was the intention to use the contested trademark as a commercial trademark and it would have been used as such. The owner then argued that the contested trademark could not be considered a repeat application due to the presence of some differences in the specific of goods and services.
Moreover, contrary to what the plaintiff argued, the owner affirmed that the trademark and copyright regulation do not exclude each other. There are many works of art registered as European trademarks.
The Decision
The Cancellation Division of EUIPO, after appraising the arguments of both parties, granted the invalidity request.
In particular, it observed that there is bad faith when the conduct of the EU trademark’s applicant moves away from the accepted principles of ethical or fair commercial or business practices.
Even though the Division in its decision observed that the re-filing of a trademark is not a banned activity in itself, when such filing is made for the specific purpose of avoiding consequences due to the failure to use earlier trademarks, then it can represent a relevant element suitable to demonstrate the bad faith of the applicant when aimed at eluding the registration system.
According to the EUIPO Division, and in line with the majority case law, holding a registration, not using it, surrendering it after five years and presenting a new application with the aim to obtain a new 5-year period, artificially extends the five-year grace period granted by the EUIPO regulation to the owner of the trademark.
Moreover, in line with what stated by the plaintiff, the EUIPO Division observed that most of the goods and services contested were actually identical to those of the previous trademark.
Therefore, considering this aspect and together with the fact that the owner did not provide any convincing argument to exclude the bad faith, the Division argued that the repeat application had been carried out to avoid the consequences of a decision on the validity of the first trademark.
The conduct of the owner could not be considered a legitimate commercial activity but, on the contrary, it resulted incompatible with the goals pursued by the European Trademark Regulation.
The EUIPO Cancellation Division accepted therefore, the request for invalidity based on the ground of the bad faith, establishing that the contested trademark filing was carried out without any commercial logic.
Giulia Mugnaini