The last laugh? EU rules in favour of challenged Banksy trademark

A board of appeal has reversed a decision which attempted to render the trademark for the British street artist Banksy’s famous monkey sign image “invalid”.

The ruling overturns a decision made in May 2021, in which the European Union Intellectual Property Office (EUIPO) considered a challenge to the trademark, registered by Banksy’s authenticating body, Pest Control, in 2019 from the greeting card company, Full Colour Black. The latter successfully opposed the mark for not being distinctive enough and for it being filed “in bad faith”.

In a comprehensive ruling published last week, the board of appeal challenged the claim that the mark was made in bad faith, arguing that: “All the arguments, facts and reasonings provided by the cancellation applicant taken as a whole cannot justify or explain clearly a dishonest behaviour from the EUTM proprietor (Pest Control) when he filed the contested mark and, consequently, the presumption of good faith is still valid and the cancellation applicant failed to prove the contrary.”

The mark is linked to a work created by Banksy in Brighton in 2002, depicting a monkey with a sandwich board hung around its neck, reading “Laugh now, but one day we’ll be in charge”. The recent decision clarified that, just because a trademark might also be a work of art subject to copyright protection, it should not mean that it cannot act as a trademark or brand.

“This is a significant victory for Banksy, or more accurately Pest Control Office Limited, which enables Banksy to conceal his identity,” says Lee Curtis, a trademark specialist at the law firm, HGF limited. He adds that, “The fact that [Banksy] he may have said on two occasions that ‘copyright is for losers’ should not impact on the validity of his trademark registration.”

Aaron Wood, a trademark lawyer at Brandsmiths, who represents Full Colour Black, says: “We are naturally disappointed by the ruling yesterday, and of course it is out of step with the recent successes. Our key argument was that Pest Control Office had filed these without an intent to use them. The appeal body seems to have overlooked that. In terms of next steps, there are no plans to appeal the decision: we will take a reasoned view based upon what Banksy does next.”