The European Union Intellectual Property Office’s (EUIPO) Board of Appeal has reversed a EUIPO decision from May 2021 canceling a trademark registration for an image of a monkey by the anonymous UK artist known as Banksy.

The monkey image has long been associated with Banksy. It reportedly first appeared in 2002 on the wall of a nightclub in Brighton with a sandwich board around the monkey’s neck reading “Laugh now, but one day we’ll be in charge.”

As ARTnews reported,

The image has been included in many Banksy works one of which sold for $2.9m at Sotheby’s during their Modern & Contemporary Art Evening Sale in London in June 2021.

The EUIPO decisions arose out of a dispute between Banksy’s marketing company and a greeting card company called Full Colour Black Limited, which makes cards based on street art.

As Artnet noted,

The company officially charged with issuing certificates of authenticity for Banksy, known as Pest Control, first filed an EU trademark claim for the monkey sign artwork in late 2018. A year later, in November 2019, Full Colour Black fought back, and applied for cancellation of the trademark, arguing that it was filed in bad faith and that it was non-distinctive.

It was here that Banksy’s own MO came back to haunt him.

Full Colour Black claimed that the art is a work of graffiti sprayed in a public place—and EUIPO agreed. “It was free to be photographed by the general public and has been disseminated widely,” the ruling states. “Banksy permitted parties to disseminate his work and even provided high-resolution versions of his work on his website and invited the public to download them and produce their own items.” 

In its 2021 decision, the EUIPO noted that,

In his book, ‘Wall and Piece’, Banksy stated that ‘copyright is for losers’ and that the public is morally and legally free to reproduce, amend, and otherwise use any copyrighted works forced upon them by third parties. Banksy has known for years that his works are widely photographed and reproduced on a massive and widespread scale by a range of third parties without there being any commercial connection between these parties and Banksy. Furthermore, he has known that the specific goods and services for which he has obtained registration comprise or include the items which have been the subject matter of this extended and extensive trade. Banksy does not use any of the images for which registration has been sought, including the mark in a suit, as a trademark.

In the latest ruling, the EUIPO Appeal Board said,

All the arguments, facts, and reasonings provided by the cancellation applicant taken as a whole cannot justify or explain clearly the dishonest behaviour of 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 Art Newspaper noted that

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.

However, Banksy previously lost the trademark for his famous “flower thrower” image (first stenciled on a wall in Jerusalem in 2003) when the EUIPO ruled that he tried “to circumvent the law” by opening a pop-up shop in Croydon, south London.

According to The Art Newspaper, “Banksy filled the shop, which never actually opened, with items “created specifically to fulfill a particular trademark category under EU law”.”

Unlike in the US and the UK, EU law doesn’t require a trademark applicant to state in the application form that they have a bona fide intention to use a trademark in commerce. However, if a trademark applicant’s goal is only to undermine a third party’s interests, that can be considered bad faith under EU law.

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