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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Juventus won a trademark dispute regarding NFTs

The Italian football club Juventus won one of the first lawsuits regarding NFTs and their clash with early registered trademarks.

The dispute at hand concerns NFTs and other digital products created by Blockeras which included an image of the former Juventus  Bobo Vieri and the club’s marks JUVE and JUVENTUS.

A non-fungible token (NFT) is a unique digital identifier that cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership. NFTs typically contain references to digital files such as photos, videos, and audio.

While Blockeras secured consent from Bobo Vieri for his image, however, they missed doing that for Juventus’ trademarks.

As a result, a lawsuit was initiated in Rome, where the football club claimed a preliminary injunction and an end to the allegedly infringing actions.

The Court concluded that the club’s trademarks were used by Blockeras which in turn could create consumer confusion about whether the club authorized this.

The Court agreed that Juventus’ trademarks are well-known, including used for different merchandising products such as clothes, accessories, and even the club’s own NFTs.

Blockeras’s argument that the football club’s marks protection in class 9 from the Nice Classification, does not cover NFTs, was dismissed. The Court considered that it is not necessary for NFTs to be mentioned precisely in the list of goods because some other included goods can cover such new digital products too.

The Court reminded that the fact Bobo Vieri agreed about the use of his image does not mean that Juventus as a club gave the same permission.

The new version of the Global Brand Database is available

WIPO reports about the launch of the upgraded version of the Global Brand Database. The change concerns mainly the interface which, according to WIPO, is more user-friendly now. The database provides some interesting stats for the searches too.

In general, this database provides access to:

  • WIPO international trademarks under the Madrid protocol,
  • national and regional trademarks shared by national and regional IP Offices,
  • International Nonproprietary Names for Pharmaceutical Substances (INN),
  • WIPO appellations of origin under the Lisbon Agreement and
  • WIPO emblems under Article 6ter. It includes WIPO data

The new edition of the Nice Classification will include blockchain-related goods and services

WIPO has announced the new 12th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks which will come into force on 01.01.2023.

What is exciting about this addition is the entrance of new types of goods and services and in particular such related to blockchain technologies.

According to the IPKat blog, the following amendments and additions were made in the upcoming edition of the classification:

In Class 9:

  • New goods: “downloadable digital files authenticated by non-fungible tokens [NFTs]”, “computer network routers”, “portable document scanners”, “cases for smartphones incorporating a keyboard”.
  • Amendment of the goods: “downloadable computer software for managing cyptocurrency transactions using blockchain technology” to “downloadable computer software for managing crypto asset transactions using blockchain technology”. 

In Class 42:

  • Amendment of the services: “information technology [IT] consultancy” to “information technology [IT] support services [troubleshooting of software]”. 
  • Amendment of the services: “cryptocurrency mining / cryptomining” to “mining of crypto assets / cryptomining”.  
  • New services: “archaeological excavation”. 

General Motors lost a trademark dispute over its trademark HUMMER

 

Masaki MIKAMI reports another interesting trademark case from Japan focusing our attention on the famous Hummer SUV. The dispute concerns the following trademark application filed in Japan in 2021 for class12 – bicycles and class 22 – tents:

Against this application, an opposition was initiated by the US car manufacturer General Motors LLC on the ground of its earlier mark HUMMER in classes 6,9,12,13,22.

The company considered both signs similar enough to cause consumer confusion, especially taking into consideration the popularity and reputation of the earlier mark.

The Japan Patent Office, however, dismissed the claim for the existing reputation of the US company’s mark amongst the consumers in Japan. The reason was the fact that these SUVs had been selling in the country but in 2010 their production was suspended. There was no solid evidence for continuous sales, market shares, advertisements, etc., that could suggest clearly that the mark had an established reputation in the country.

When it comes to the signs themselves, the Office found them dissimilar from visual and phonetic points of view. Conceptually both marks have no specific meaning for Japanese consumers at all. According to the Office, the first part of the mark applied for HEAVYDUTY, which has no meaning for the consumers, was distinctive enough in order to make the difference between the signs. This in conjunction with the graphic elements was enough to overcome the similarity between the marks.

HBO’s trademark strategy for HOUSE OF THE DRAGON

Is it necessary for a television series title to be registered as a trademark?

The question is rhetorical and the answer is clearly yes. The reason for this is related to the potential additional profit that can be generated if the series becomes popular. Trademark protection is crucial in such cases because it can prevent someone else to start using the title for commercial purposes not only for TV series but for many other merchandising products and services such as cosmetics, jewelry, clothes, toys, foods, drinks, entertainment, etc.

A good example of this strategy is the one used by HBO related to their last top series HOUSE OF THE DRAGON a prequel to Game of Thrones. The new series is liked by the fans with an IMDB rating of 8.6.

Although the series has launched recently, HBO started to file trademarks around the world for this title 2 years ago.

The TMView database shows 41 trademarks HOUSE OF THE DRAGON filed or registered in many countries around the world for classes such as 3, 14, 16, 18, 21, 25, 28, 32, 33, and 43 that covers amongst other cosmetics, jewelry, clothes, toys, drinks, etc.

Apart from this, in order to solidify its position, HBO filed different national trademarks in specific languages different from English. One example of this is a Bulgarian trademark for ДОМЪТ НА ДРАКОНА (House of the Dragon) for classes 9, 25, 41.

Such trademark portfolio allows HBO full control of the title exploitation for commercial purposes everywhere which by itself is a good base for lucrative licensing deals.