Copyrights may be for losers but trademarks are not – Banksy won a trademark dispute

The well-known graffiti artist Banksy has received some positive news recently regarding his attempt to take advantage of the IP system while not liking it or at least the copyright in particular.

The case concerns the following registered EU trademark, representing graffiti art painted by Banksy, in classes 9, 16, 25, 28 и 41:

The mark was registered by Pest Control Office Limited, a company managing artists’ legal rights, taking into account that he is anonymous and is famous with that status apart from his exciting artworks.

Against this mark, a request for invalidation was filed by Full Colour Black Limited on the ground of lack of distinctive character and bad faith.

The EUIPO Cancelation division invalidated the mark finding that it was made in bad faith. The reason for this was the fact that because of his anonymity the artist was unable to rely on copyright protection. What’s more, he is famous for his statement that copyright is for losers.

In another 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”.

The Office considered all of this as the only reason why the artist wanted to register a trademark for his art, which will give him a tool to control its commercial use.

According to the Office:

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 EUTM proprietor (or Banksy) had never actually marketed or sold any goods or services under the contested EUTM. Moreover, some of the EUTM 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.

Taking all of that the Office considered that the mark was filed in bad faith.

The Board of Appealed, however, disagreed. According to the Board, the conclusion of the Consolation division was subjective. Bad faith cannot be assumed only based on single statements that do not show the entire position of the artist.

The Board cannot follow this view. Although the protection under copyright law is definite and ends 70 years after the death of the author whereas trade mark protection can in principle be indefinite, this circumstance does not mean that the
filing of a trademark consisting of a creation protected under copyright law is automatically unlawful and circumvents the copyright law. As stated above under paragraph 27, the same artwork can be protected by copyright as well as by trademark law.

The assumption that the need of staying anonymous was the reason to opt out from copyright protection and go for trademark protection, as submitted by the Cancellation applicant, even if it would be correct, cannot justify a finding that the
EUTM proprietor had no intention to use the contested mark.

Finally, the statement ‘Copyright is for losers’ has no bearing at all on the case at hand. The contested decision does not reason sufficiently about its finding of bad faith. It mainly bases its final findings on the supposition that the EUTM proprietor could
only with difficulties preventing its artwork under copyright and on the fact that it started only on October 2019 to use its mark and with the purpose to maintain the contested mark but not to use it according to the essential functions of a trademark.

The contested decision bases its finding on wrong facts because it has not been shown that on October 2019 the EUTM proprietor stated to use the contested mark. In any event, the reasons furnished in the contested decision cannot explain nor indicate that at the relevant filing date the EUTM proprietor had not intended to use its mark

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An Instagram post of Rihanna has caused trouble for Puma shoe design in the EU

The Board of Appeal of the EUIPO has ruled in one interesting case related to Community designs and why their protection should be considered in great detail.

The case concerns the RCD application filed in 2016 by PUMA for the following design of shoes:

Several years later, an invalidation proceeding was initiated against this design on the grounds of lack of novelty and individual character. For evidence, an Instagram post was submitted where the well-known signer Rihanna was pictured wearing quite similar shoes. The post was dated 2014.

According to the EU legislation, one design is protectable only if it is new and original. Novelty means that there has to be no public information for the design 12 months before the application is filed with the Patent Office.

In the case at hand, The Board found that Rihanna’s post on Instagram, having more than 300 000 likes and additional media coverage, was solid proof that the shoes design was public way before its application with the EUIPO.

Furthermore, the BoA points out that the designs under comparison create similar overall impressions
on account of the same shape and form of the shoe, consisting of an upper part with a number of lines
and holes placed and arranged the same way, as well as the same shape and form of the thick, vertically-striped sole. Thus, the contested design lacks individual character.

The case comes to show us how important is timing in the case of design protection. In such situations, there are two main options, the owner to file an application sooner or the marketing activities to be postponed.

CAT won a tiger trademark dispute in the EU

The General Court of the European Union has ruled in the case T‑251/21, Tigercat International Inc. v Caterpillar Inc., that has the following background:

 On 26 August 2013, Tigercat International Inc. filed an application for registration of an EU trademark for Tigercat in class 7: specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof.

Against this application, an opposition was filed from Caterpillar Inc. based on an earlier word mark CAT and the following combined mark, both in classes 7 and 12, including for forestry machines:

The EUIPO upheld the opposition in its entirety finding both signs similar enough. The decision was appealed.

The General Court found similarities and identities between the goods of the marks. When it comes to the signs themselves, the Court concluded that the relevant public can recognize two separate words in the later mark – Tiger and Cat because both have their own distinctive meaning.

According to the Court:

In the present case, the mere fact that the element ‘tiger’ has been placed at the beginning of the mark applied for is not sufficient to confer on it a dominant character. There is nothing to indicate that the average consumer of the relevant public will attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect is counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although they are directly juxtaposed, each has a clear meaning for the relevant public. Thus, contrary to what the applicant submits, the element ‘cat’, which has a specific meaning distinct from the element ‘tiger’, does not have merely a laudatory connotation intended to highlight the element ‘tiger’.

In the present case, the Board of Appeal noted that the signs at issue had the element ‘cat’ in common, whereas they differed in the presence of the first element of the mark applied for, namely the word element ‘tiger’, and in the figurative elements of the earlier mark. It concluded from that that they had an average degree of visual similarity.

That assessment is irreproachable. Although the applicant takes the view that the signs at issue are visually different because of their different length and the presence of capital letters and figurative elements in the earlier mark, the fact remains that they coincide in the element ‘cat’, which constitutes the only word element of the earlier mark and has a distinctive character. The fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue, even where the relevant public has a high level of attention. The presence of the element ‘tiger’ – which is not dominant – at the beginning of the mark applied for does not lead to the conclusion that the signs at issue are dissimilar.

In the present case, it should be noted that the signs at issue differ in that the mark applied for contains, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contains the common element ‘cat’. Nonetheless, the fact remains that that common element could be pronounced when the goods at issue are purchased, thus justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to an average degree.

Since the mark applied for, which is composed of the elements ‘tiger’ and ‘cat’, also refers to the concept of a ‘cat’, it should be concluded that the Board of Appeal was correct to conclude that the signs at issue were conceptually highly similar.

Against this backdrop, the Court dismissed the appeal and upheld the EUIPO’s decision.

When does Irish origin matter for trademark protection in the EU?

The General Court of the European Union has ruled in the case T-306/20 – Hijos de Moisés Rodriguez Gonzàlez SA v EUIPO, Ireland and Ornua Co-operative Ltd. The case has the following background:

In 2013, the Spanish company Hijos de Moisés Rodriguez Gonzàlez SA filed an EU trademark for the following figurative sign:

On 3 January 2014, the mark applied for was registered in respect of the following goods in Class 29: Meat, fish, poultry, and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

On 7 January 2015, Ireland and the intervener, Ornua Co-operative (previously known as Irish Dairy Board Co-operative Ltd), filed an application for a declaration that the contested mark was invalid in respect of all the goods above.

In the application for a declaration of invalidity it was claimed that the mark was deceptive under the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) of that regulation (now Article 59(1)(a) and Article 7(1)(g) of Regulation 2017/1001), and that the registration of that mark had been applied for in bad faith for the purposes of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001).

By decision of 15 June 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that Article 7(1)(g) of Regulation No 207/2009 was not applicable, because it had to be established that the contested mark was deceptive at the time it was filed. The Cancellation Division took the view that, in the case before it, any possible deception resulted from the use of that mark after the end of the commercial agreement which had been entered into by the applicant and the intervener and which was in force from 1967 to 2011. It found that that situation was specifically covered by the ground for revocation laid down in Article 51(1)(c) of Regulation No 207/2009 (now Article 58(1)(c) of Regulation 2017/1001). The Cancellation Division also rejected the argument raised under Article 52(1)(b) of that regulation, finding that no conclusion regarding bad faith could be drawn from the fact that the contested mark had been filed after the termination of the business relationship with the intervener.

On 12 August 2016, Ireland and the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

By decision of 6 December 2017, the Presidium of the Boards of Appeal referred the case to the Grand Board of Appeal.

By the contested decision, the Grand Board of Appeal of EUIPO found that, at the time when the application for registration was filed, the contested mark was used in a deceptive manner. It also found that the registration of that mark had been applied for in bad faith. Consequently, it annulled the Cancellation Division’s decision and declared the contested mark invalid.

According to the Board, consumers could believe that the goods originate from Ireland which could not be the case.

The decision was applied before the General Court.

The Court annulled the first part of the Board’s decision stating that the ground of deceptiveness should have to be evaluated at the time when the trademark application was filed.

Nevertheless, the invalidation was confirmed because the Court found that the mark was filed in bad faith.

The reason for this was that the Parties, in this case, had long-lasting trade relationships, where the Spanish company had been importing Irish butter under this mark. After the end of their partnership, the above trademark was filed, which could take advantage of the associations with the Irish origin of the goods. That is to say, consumers can believe that the goods under the same mark are still from Ireland which can not be the case.

According to the Court:

In the present case, in the first place, as regards the misleading use of the contested mark, it is common ground between the parties that: (i) for decades, the applicant sold butter of Irish origin under that mark in the context of its contractual relationship with the intervener; (ii) after that relationship came to an end, it continued to sell foodstuffs under that mark; and (iii) a not insignificant part of those foodstuffs, including dairy products and pork products, was not of Irish origin. In any event, the applicant has not claimed that all the goods which it sold under the contested mark originated in Ireland.

In other words, the applicant sold goods under the contested mark even though a not insignificant part of those goods was not of Irish origin and therefore did not correspond to the relevant public’s perception of those goods.

Once the applicant had extended the use of the contested mark to goods other than butter of Irish origin, Spanish-speaking consumers, who constitute the relevant public, were likely to be misled as to the geographical origin of those goods, since they had become accustomed over the course of several decades to the contested mark being affixed to butter originating from Ireland. Such conduct is evidence of bad faith inasmuch as it shows that, when filing the application for the contested mark, the applicant intended unfairly to transfer the advantage derived from the association with Ireland to goods not having that geographical origin, in particular after the end of its business relationship with the intervener which supplied it with Irish butter.

Can anyone register an EU trademark for Powerball?

Filing a trademark application in bad faith can jeopardise seriously trademark’s future protection because legislation allows such marks to be canceled.

One interesting example of such consequences is from the EU, where the Gibraltar-based company for online bets Lottoland successfully registered a trademark for “Powerball” in classes 35, 41, and 42.

As it is well-known “Powerball” is a US lottery, probably one of the most famous in the entire world, with a record jackpot of $1.5 billion USD.

The lottery is organized by the US Multi-State Lottery Association, whose EU trademark for Powerball was revoked based on non-use for 5 consecutive years.

When the US Accossiation found out about the later trademark Powerball it filed a cancelation request with the EUIPO claiming bad faith. According to the Association, the purpose of the Gibraltar company was to mislead the EU consumers about the real organizer of the lottery. Evidence for such dishonest behavior was the fact that Lottoland registered trademarks for other lotteries such as  EuroMillions and EuroJackpot whose organizers are different.

In contrast, Lottoland counterclaimed that its trademark was legally registered because Powerball has no reputation amongst the consumers in the EU.

The EUIPO agreed with the US Association and canceled the EU mark based on bad faith attempt in regard to its registration. According to the Office, there is no need for one trademark to be known in the EU in order bad faith claim to be possible. The Office considered Lottoland’s behavior dishonest, trying to restrict the real owner of the mark to use it in the EU as well as all other market participants, from one side, and to mislead consumers, from another.

The conclusion of this case is that you need to bear in mind the fact that although one trademark protection has lapsed, this does not mean automatically the sign can be used by someone else. Such use should be analyzed carefully considering all facts and risks.

Source: FRKelly – Adam Flynn for Lexology.

Is there bad faith in the case of new registration of former trademarks?

Is it possible for an old former trademark that is not protected anymore to be registered by a new owner and whether this can be a bad faith practice? This is the question to which the General Court of the European Union has answered recently in the case T‑250/21 Ladislav Zdút v EUIPO: The case has the following background:

On 6 May 2013,  Ladislav Zdút filed an application for registration of an EU trademark with EUIPO for the following sign:

The goods for which registration was sought were:

–  Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks’;

–  Class 24: ‘Bed covers; Table covers’;

–  Class 25: ‘Clothing, footwear, headgear’.

The mark was registered on 31 October 2014 under number 11794112.

On 17 June 2019, the interveners, Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity against that mark (‘the contested mark’), in accordance with the provisions of Article 59(1)(b) of Regulation 2017/1001, in respect of all the goods covered by that mark. They claimed that the applicant was acting in bad faith when he filed the application for registration of the contested mark. They stated, inter alia, that in Czechoslovakia in the 1930s, their grandfather, Mr Jan Nehera, had established a business marketing clothing and accessories and had filed and used a national mark identical to the contested mark (‘the former Czechoslovak trademark’).

By decision of 22 April 2020, the Cancellation Division of EUIPO dismissed the application for a declaration of invalidity, on the ground that the applicant’s bad faith when he filed the contested mark had not been established.

On 15 June 2020, the applicants filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO upheld the interveners’ appeal, annulled the decision of the Cancellation Division, and declared the contested mark invalid.

In essence, the Board of Appeal found that the former Czechoslovak trademark was a well-known mark and had been put to genuine use in Czechoslovakia in the 1930s. It held that the applicant was aware of the existence and celebrity both of Mr Jan Nehera and of the former Czechoslovak trademark, which retained a certain surviving reputation. The Board of Appeal also stated that the applicant had attempted to create an association between himself and that former Czechoslovak trademark. In those circumstances, the Board of Appeal considered that the applicant’s intention was to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark. It found that the applicant was acting in bad faith when he filed the application for registration of the contested mark.

The decision was appealed.

According to the Court, the fact that one mark was been protected in the past, being reputable amongst consumers, does not mean automatically that every new application for the same mark will be deemed as made in bad faith. It is necessary for the reputation of the old mark still to exist and the bad faith actions to be proved.

According to the Court:

However, it should be borne in mind that, according to the case-law, the existence on the part of the relevant public of a link between a later trademark and a former sign or name cannot be sufficient, on its own, to support a finding that unfair advantage was taken of the reputation of the sign or of the former name.

In addition, it should be noted that the concept of unfair advantage being taken of the reputation of a sign or a name covers a situation in which a third party rides on the coat-tails of a formerly renowned sign or name in order to benefit from its power of attraction, its reputation and its prestige and, without any financial compensation and without having to make any efforts of its own in that regard, to exploit the commercial effort expended by the proprietor or user of that sign or of that name in order to create and maintain the image of that sign or of that name.

However, in the present case, the applicant claims, unchallenged either by EUIPO or by the interveners, that in 2013, the former Czechoslovak trademark and the name of Mr Jan Nehera were completely forgotten by the relevant public, and that he himself devoted considerable effort, time and money to revive the Nehera mark and to make known the history of Mr Jan Nehera and of his business. It follows that, far from merely having exploited in a parasitic way the past reputation of the former Czechoslovak trademark and the name of Mr Jan Nehera, the applicant made his own commercial efforts in order to revive the image of the former Czechoslovak trademark and thus, at his own expense, to restore that reputation. In those circumstances, the mere fact of having referred, for the purposes of promoting the contested mark, to the historic image of Mr Jan Nehera and of the former Czechoslovak trademark does not appear to be contrary to honest practices in industrial or commercial matters.

Secondly, and in any event, the former Czechoslovak trademark and Mr Jan Nehera’s name no longer benefited from any legal protection in favour of a third party at the date on which the application for registration of the contested mark was filed (see paragraphs 42 and 43 above). It follows that Mr Jan Nehera’s descendants and heirs did not hold any right that might be susceptible to fraud or to being usurped by the applicant. Therefore it does not appear that, in applying for registration of the contested mark, the applicant intended to defraud the descendants and heirs of Mr Jan Nehera or to usurp their alleged rights.

In the fifth and last place, EUIPO claims, as the Board of Appeal stated in paragraph 36 of the contested decision, that the concept of bad faith does not necessarily imply any degree of moral turpitude.

In that regard, it is sufficient to note that, according to the case-law cited in paragraph 23 above, the concept of bad faith presupposes the presence of a dishonest state of mind or intention. In the present case, EUIPO and the interveners have not established that the applicant was driven by a dishonest state of mind or intention when he filed the application for registration of the contested mark.

It follows from all of the foregoing that the Board of Appeal erred in finding that the applicant intended to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark and in finding that he was acting in bad faith when filing the application for registration of the contested mark.

New forms for filing European trademarks and designs

The EUIPO reports about the upcoming launch of a new form for filing European trademarks and designs that will be available on 01.08.2022. This new form is part of a smooth transition to the new website and User Area that will provide:

  • customization options allowing you to tailor your filing experience;
  • a new design with full guidance and contextual help;
  • faster goods and services management;
  • enhanced security.

An instructional video can be found here.