Insights

Article 59(1)(b) of the European Trademark Regulations (the “EUTMR”) provides that a trademark may be invalidated on grounds of bad faith i.e. where the trademark applicant would have applied for a TM in bad faith.

You would expect that, in support of such an absolute ground for invalidation the EUTMR would provide a legal definition of the term ‘bad faith’. However, this is surprisingly not the case and as expected, paves the way for varying interpretations.

Jurisprudence has clarified that bad faith is interlinked with the Trademark Applicant’s intentions when filing a European Union Trademark (a “EUTM”), the mens rea so to speak. Interestingly enough, intentions alone, generally speaking, are not subject to any legal consequences, but the pairing of bad faith with the application of a trademark is subject to invalidation of the that particular trademark under the EUTMR.

Various opinions have been put forward on what constitutes bad faith as a ground for invalidation. In the Opinion of Advocate General Sharpston (12/03/2009, C-529/07, Lindt Goldhase, EU:2009:361,37), it is claimed that bad faith arises when the conduct of the trademark applicant digresses from widely accepted standards and principles of ethical or honest behaviour and practices. He further emphasised the importance that such an assessment, of whether the applicant acted in bad faith or not, considers all the factors relevant to the particular case. It may therefore be considered that due to the vague interpretation of the term ‘bad faith’, each case must be decided on a case-by-case basis. Furthermore, the burden of proof lies with the applicant requesting the invalidity, with the original applicant deemed to be good faith unless proven otherwise.

In the application for the invalidity of the ‘flower bomber’ trademark, , a greeting card company, Full Colour Black Limited (“Full Colour Black”), filed to invalidate the trademark held by Pest Control of a widely popular and known image, on the basis of bad faith. Pest Control, the proprietor of the ‘flower bomber’ trademark, is a corporation that acts on behalf of Banksy. Full Colour Black argued, on the grounds of bad faith, that the artwork is a work of graffiti sprayed in a public place and was freely disseminated, and that Banksy permitted this dissemination and even provided high-resolution versions of his work on his website to invite the public to download and produce their own items. They most notably argued that Banksy, who is known to oppose the concept of copyright famously stating in his book ‘copyright is for losers, ’never had an intention to use the image as a trademark and that the EUTM was only registered to circumvent the proprietor’s inability, due to anonymity, to rely on other appropriate forms of protection, in particular copyright protection. Full Colour Black further argued that, where there is no intention to use a sign as a trademark and to obtain a collateral benefit in the obtaining of a trademark, bad faith would subsist in filing the trademark.

The proprietor contented that Full Colour Black’s argument only proved how quickly Banksy’s works gained reputation and how easily commercial entities seek to capitalise on his creative works in spite of his express refusal of permission for such commercial activities. It is thus, according to the proprietor, perfectly justifiable to seek protection against such commercial exploitation via a trademark.

In its assessment of bad faith, the Cancellation Division of the European Intellectual Property Office (the “Cancellation Division”) assessed whether or not:

• the proprietor filed for EUTM protection without the aim of engaging fairly in competition but instead with the intention of undermining the interests of third parties and therefore in a manner inconsistent with honest practices; or
• with the intention of obtaining, without even targeting a specific third party an exclusive right for purpose other than those falling within the general functions of a trademark.

The purpose of a trademark is to allow consumers to identify the commercial origin of the goods or services at issue, and to distinguish these goods or services form those of other companies. Trademark protection is not to prohibit others from registering or using signs but to identify goods and services in order to carve out a portion of the commercial market.

The Cancellation Division held that Banksy’s anonymity impedes him from coming forward to claim legitimate intellectual property protection under copyright law, which is the proper form of protection for original artistic works. Moreover, Banksy’s declared unwillingness to use copyright in juxtaposition with the supposed intention behind the registration of the EUTM to circumvent the laws of intellectual property, was classified by the Cancellation Division as bad faith, thus upholding Full Colour Black’s application to invalidate the EUTM and leaving Banksy standing in the shadow of anonymity with no form of protection.