Is Trademark for Losers?

Photo Credit: Banksy (https://www.flickr.com/photos/major_clanger/4894673199)

Tugce Kucukali is an IPilogue Writer and incoming LL.M Candidate at University of British Columbia.

 

Under European Union trademark law, a trademark registration filed in bad faith may be subject to a request to invalidate the trademark. However, since the term “bad faith” is not precisely defined in EU law, bad faith is identified by assessing the facts of each case. In several decisions released in April, the Court of Justice of the European Union (CJEU) and the European Union Intellectual Property Office (EUIPO) made evidentiary assessments regarding bad faith and the purpose of interfering with the registration of famous persons’ names and works.

France Agro v EUIPO – Chafay (Choumicha Saveurs)

The trademark registration for the “Choumicha Saveurs” mark was deemed as filed in bad faith by the General Court of the CJEU in light of the reputation of Choumicha Chafay, better known as Choumicha. When assessing bad faith, the Court considered Choumicha’s line of business, the goods covered by the application, and the fact that the applicant company’s manager is Moroccan.

Choumicha argued that while she does not possess rights to her brand or trade name in the EU, she is well-recognized in France and commercially uses her brand, the Choumicha mark, and her image in Morocco. Specifically, the Moroccan community in Belgium and France have known Choumicha as a chef since the 2000s. The applicant, who used an Arabic word in the trademark to target the Arab-speaking community in Europe, undoubtedly knew her reputation  at the time of application. Even the goods under the impugned trademark relate to the culinary industry.

Banksy’s Laugh Now Trademark

One of Banksy’s works, registered as a figurative trademark, was subject to an invalidation request due to filing in bad faith. As emphasized in the Sky decision, a known example of trademark filing in bad faith is to file an application without intending to use the trademark.

Banksy’s anonymity hinders the copyright protection for his works of art. The trademark owner, the company presumed to be Banksy’s legal representative, argued that the filing has the legitimate objective of securing the rights granted through copyright protection. However, the applications filed lacked the necessary purpose of using the trademarked goods and services and additionally, trademark law is not meant to substitute copyright protection. Banksy’s attitude towards intellectual property rights is well-known; the ruling cited a quote from Banksy’s book, ‘Wall and Piece’, where he remarked “copyright is for losers.” Although the EUIPO stated that his attitude does not preclude Banksy of claiming his rights, it is relevant by showing Banksy’s intention for filing the trademark.

In recent years, Banksy has permitted third parties to use his works for non-commercial purposes. However, the EUIPO disagreed with the trademark owner that Banksy reserved the right to use his works for commercial purposes. In addition, Banksy has not taken any legal action against such uses by giving consent or negotiating licenses, and no serious trademark use by him was identified prior to the application date.

The motivation behind the venture was “possibly the least poetic reason to even make some art” – a trademark dispute (…) I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law,” Banksy said in 2019 in a notable UK publication, as quoted by the decision. Even though a trademark application may be deemed as an indication of a will to use the trademark, statements like these undermine that intention. Thus, the EUIPO concluded that the trademark registration was made to circumvent the law rather than to use it for commercial purposes.

The Future of Bad Faith

In both decisions, the assessments concerning the trademark applicant’s intent were made by the factual evaluation of the statements and circumstances relevant to the application. A statement made years ago or the applicant’s background could form the basis for the bad faith assessment. Although each assertion of bad faith is decided on a case-by-case basis, these recent decisions can instruct the EU Member States as they navigate EU trademark law.

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