Nullità di marchio depositato in mala fede (ancora sul caso Bansky)

Dopo la sconfitta nel caso <Flower thrower> (v. mio post su questo blog 28.09.2020), Bansky perde una altra volta in sede amministrativa e per la stessa ragione.

Il marchio è dichiarato nullo perchè depositato in mala fede ex art. 59.1.b deL reg. 2017/1001: la mala fede consiste nell’intenzione a priori di non usarlo.

La decisione è 18.05.2021, Cancellation Division EUIPO, n. 39 873 C, Full colour Balck ltd c. Pest Contro Office ltd (rappresentante di Bansky) https://files.lbr.cloud/public/2021-05/banksy%20monkey%20trademark%20cancellation.pdf?PjoCw7xOfeYRlSa6qorTXr9hkL4QcK1Y= .

Si tratta del marchio UE No 17 981 629 (the EUTM), depositato nel  luglio 2018 e concesso nell’agosto 2019, rappresentante la nota scimmietta con borsa bianca sul davanti (v.la in decisione), che riproduce una parte della creazione del 2002 <<Laugh now>> (“Laugh now, but one day we’ll be in charge”).

<<From the evidence submitted Banksy has not manufactured, sold or provided any goods or services under the contested mark or sought to create a commercial market for his goods until just before the filing of the present application for a declaration of invalidity. Only then, in October of 2019, after the applicant had brought prior proceedings 33 843 C against the proprietor, as referred to by the applicant in its initial observations, which were pending at the time, he opened an online store (and had a physical shop but which was not opened to the public) but by his own words, reported in a number of different publications in the UK, he was not trying to carve out a portion of the commercial market by selling his goods, he was merely trying to fulfil the trade mark class categories to show use for these goods to circumvent the non-use of the sign requirement under EU law. Both Banksy and Mr. M.S, who is a Director of the proprietor, made statements that the goods were created and being sold solely for this cause. Therefore, by their own words they admit that the use made of the sign was not genuine trade mark use in order to create or maintain a share of the market by commercialising goods, but only to circumvent the law.
The contested EUTM was filed on 07/11/2018. The evidence shows that the proprietor did not sell any goods or provide any services under the sign until October 2019. In fact the evidence shows that Banksy repeatedly made statements that he was not making or selling any of these goods and that the third parties were doing this without his permission. Banksy started to sell goods in late 2019 only one month prior to the filing of the present application but specifically stated that they were only being sold to overcome non-use for trade mark proceedings and not to commercialise the goods. Banksy by his own admission is clearly against intellectual property laws, but this does not mean that he is not afforded the same protection under these laws as everybody else. However, there are restrictions to the right to register a trade mark and that would be in the case where the mark is filed in bad faith>, pp.11-12.

E poi sull’art. 59.1.b:

<<Article 59(1)(b) EUTMR meets the general interest objective of preventing trade mark registrations that are abusive or contrary to honest commercial and business practices. These registrations are contrary to the principle that EU law cannot be extended to cover abusive practices on the part of a trader, which do not make it possible to attain the objective of the legislation in question (23/05/2019, T-3/18 & T-4/18, ANN TAYLOR / ANNTAYLOR et al., EU:T:2019:357, § 33).
Bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM, for example, a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. (29/01/2020, C 371/18, SKY, EU:C:2020:45, § 81).>>, p. 12.

Considerazioni generali che, applicate ai fatti di causa, portano l’ufficio a dire:

<<The predicament of Banksy’s right to the work ‘Laugh Now’ (or part thereof) is clear. To protect the right under copyright law would require him to lose his anonymity which would undermine his persona. It is clear that when the proprietor filed the EUTM he did not intend to use the EUTM and actual use was only made of the EUTM, after the initiation of the previous proceedings No 33 843 and approximately one month prior to the filing of the present proceedings, and such use was identified as use to circumvent the requirements of trade mark law and thus there was no intention to genuinely use the sign as a trade mark. Banksy was trying to use the sign only to show that he had an intention of using the sign, but his own words and those of his legal representative, unfortunately undermined this effort. Thus, it must be concluded that there was no intention to genuinely use the sign as a trade mark and the only eventual use made of the sign was made with the intention of obtaining an exclusive right to the sign for purposes other than those falling within the functions of a trade mark.>>, p. 12-13

Disperato tentativo di difesa con considerazioni genrali di policy: <<In this respect the proprietor claims that where a party is taking advantage of a sign due to their knowledge that the owner of the sign cannot enforce unregistered trade mark rights and copyright without prejudicing his public persona or business interests, obtaining a trade mark registration through an incorporated company in order to enforce these rights is a ‘legitimate objective’ and not an application in bad faith. Later it also argues that the person and the company are distinct and that the opinions of the individual cannot harm or show the position of the business. However, as seen above in the present decision the proprietor is deemed to be the representative or agent of Banksy as the principal>>.

Risposta tranciante dell’ufficio: <<As such, this argument cannot be accepted. Moreover, Banksy has chosen to remain anonymous and for the most part to paint graffiti on other people’s property without their permission rather than to paint it on canvases or his own property. He has also chosen to be very vocal regarding his disdain for intellectual property rights, although clearly his aversion for intellectual property rights does not annul any validly acquired rights to copyright or trade marks. It must be pointed out that another factor worthy of consideration is that he cannot be identified as the unquestionable owner of such works as his identity is hidden. The contested EUTM was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that is not a function of a trade mark. Therefore, the filing of a trade mark cannot be used to uphold these rights which at least may not exist for the person claiming to own them.>>, p. 15

In sintesi:

<<Moreover, applying the above cited judgment and the previous findings it is clear that Banksy did not have any intention to use the EUTM in relation to the contested goods and services at the time of filing of the EUTM which is the relevant time period to be taken into consideration. He only began using the sign after the previous application for a declaration of invalidity 33 843C was filed and only one month prior to the filing of the present application. Moreover, at the time of said use Banksy and his representative stated that the use was only to overcome EU laws regarding the issue of non-use in relation to a trade mark dispute which shows that his intention was not to use the mark as a trade mark to commercialise goods or provide any services in order to carve out a portion of the relevant market, but only to circumvent the law. These actions are inconsistent with honest practices. They show that his intention was to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. Although the proprietor also states that he intends to make genuine use of the EUTM in the coming years what must be examined in the present application is the proprietor’s intention at the time of the application of the contested mark.
Following from the case law cited above bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM or if the intention in filing the EUTM was to obtain an exclusive right for purposes other than those falling within the functions of a trade mark. Therefore, for the reasons given above the proprietor’s actions are inconsistent with honest practices as it had no intention to use the EUTM as a trade mark according to its function and thus the EUTM was filed in bad faith. This finding is also in line with the decision of the Cancellation Division of 14/09/2020, 33 843 C in the ‘Flower Thrower’ decision which has become final. Moreover, the filing of other marks under the same circumstances is a strong indication that the present mark was also applied for in bad faith (see, for analogy, 25/02/2013, No R 2448/2010, ‘AERMACCHI MILANO’, § 22).>>, p. 16.

Questioni interessanti sia sulla malafede al deposito sia sul rapporto col diritto di autore ( ove: i) impossibilità di esercitare i diritti restando nell’anonimato; v. però da noi diverse norme che paiono portare ad un esito diverso, come l’art. 9 in generale e l’art. 126 n 1. l. aut. per il contratto di edizione; ii) bypassare il termine settantennale p.m.a. tramite la tutela da marchio)

Bansky perde il marchio (decisione sul deposito in malafede)

Molti giornali anche non specialistici hanno riportato la notizia per cui l’Ufficio Europeo dei marchi ha dichiarato nullo il marchio di Bansky riproducente il suo celebre disegno <Flower thrower>:

Flower thrower (dal database EUIPO)

Si tratta della decisione 14.09.2020 sul marchio n° 012575155 , depositato il 07/02/2014.

La decisione può essere letta nel database dell’ufficio. Purtroppo non è divisa in §§ brevi per cui il resoconto può essere meno agevole del solito (mi riferirò dunque solo al numero di pagina)

Era stato chiesto per molte classi merceologiche.

La domanda di annullamento era fondata sia sull’art. 59.1.b (deposito in malafede) sia sull’art. 59.1.a riferito all’art. 7.1.b-c del reg. 2017/1001 c.d EUTMR. Viene accolta solo sul primo punto (malafade al momento del deposito), assorbita sul secondo.

In generale sulla buona fede l’Ufficio dice che ricorre <<where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark filed its application for registration without any intention of using the contested EUTM, or withoutthe aim of engaging fairly in competition, but with the intention of undermining the interests of third parties, in a manner inconsistent with honest practices, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes otherthan those falling within the functions of a trade mark, in particular the essential function of indicating origin>>, p. 9.

L’onere della prova <of the existence of bad faith lieswith the invalidity applicant; good faith is presumed until the opposite is proven>, p. 8.

Bansky (nome d’arte, l’artista è ancora anonimo) non commercializzava alcun bene al momento del deposito: anzi dichiarava che la cosa non lo interessava.

Iniziò ad operare commercialmente solo dopo aver ricevuto notifica della domanda di annullamento, aprendo un negozio (una mera vetrina, senza possibilità di acquisto) per indurre ad acquisti on line.

Ma anche questa attività, il punto è interessante a livello teorico, la pose in essere, dichiarando che non vi era interessato e che lo faceva solo per non decadere dal diritto di marchio : <From the evidence submitted Banksy had not manufactured, sold or provided any goods or services under the contested sign or sought to create a commercial market for his goods until after the filing of the present application for a declaration of invalidity. Only then, in October of 2019, he opened an online store (and had a physical shop but which was not opened to the public) but by his own words,reported in a number of different publications in the UK, he was not trying to carve out a portion of the commercial market by selling his goods, he was merely trying to fulfil the trade mark class categories to show use for these goods to circumvent the non-use of the sign requirement under EU law. Both Banksy and Mr. M.S, who is a Director of the proprietor, made statements that the goods were created and being sold solely for this cause>>, p. 11

Va notato che il registrante non era Bansky (allo scopo di restare anonimo) ma un suo rappresentante (the proprietor)

Il succo della decisione è qui: <<The EUTM was filed on 07/02/2014. The evidence shows that the proprietor did not sell any goods or provide any services under the sign until after the initiation of the present proceedings. In fact the evidence shows that Banksy repeatedly made statements that he was not making or selling any of these goods and that the third parties were doing this without his permission. The evidence also shows that from the time of filing of the EUTM until after the filing of the present application this position did not change. It was only during the course of the present proceedings (after the grace period had ended and after the present invalidity proceedings had been initiated) that Banksy started to sell goods but specifically stated that they were only being sold to overcome non-use for trade mark proceedings and not to commercialise the goods. Banksy by his own admission is clearly against intellectual property laws, but this does not mean that he is not afforded the same protection under these laws as everybody else. However, there are restrictions to the right to register a trade mark and that would be in the case where the mark is filed in bad faith>>

L’ufficio dice che la mala fede può ricorrere <if it transpires that the EUTM proprietor never had any intention to use the contested EUTM, for example, a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark>, p. 12.

Il dilemma di Bansky è chiaro, dice l’ufficio: <To protect the right under copyright law would require him to lose his anonymity which would undermine his persona. Moreover, there are a number of legal issues which might even result in it being very difficult for him to actually claim copyright over the work although this can be left open for the present purposes. It is clear that when the proprietor filed the EUTM he did not have any intention of using the sign to commercialise goods or provide services. The use, which was only made after the initiation of the present proceedings, was identified as use to circumvent the requirements of trade mark law and thus there was no intention to genuinely use the sign as a trade mark. Banksy was trying to use the sign only to show that he had an intention of using the sign, but his own words and those of his legal representative, unfortunately undermined this effort. Thus it must be concluded that there was no intention to genuinely use the sign as a trade mark and the only eventual use made of the sign was made with the intention of obtaining an exclusive right to the sign for purposes other than those falling within the functions of a trade mark>, p. 12

Bisognerebbe però distinguere bene il caso della mancanza di uso da quello di uso presente ma finalizzato solo alla conservazione del diritto e nulla più: sul secondo si può discutere , costituendo il vero interesse teorico di questa vicenda. Va ricordato infatti che il registrante ha cinque anni a disposizione per iniziare l’uso, prima di decadere per non uso.

E’ noto che oggi in Italia non è necessario che il depositante sia già un imprenditore (art. 19 c.1 cpi) o che abbia da subito progetti di cessione a terzi che lo usino imprenditorialmente. C’è dottrina divergente sul punto (in Italia).

Potrebbe infatti parlarsi di uso <simulato>, che non vale l’uso <effettivo> chiesto dalla norma per evitare la decadenza.

Altro profilo interessante è quello dell’applicazione della malafede al caso in esame e cioè di chi lo chiede senza intenzione di usarlo ma al tempo stesso senza intenzione di ledere uno specifo concorrente. Il concetto di malafede infatti è di solito usato con riferimento a casi di intento lesivo verso soggetti determinati: il che non pare ricorresse nel caso Bansky o comunque bisognerebbe ragionarci.

Potrebbe in sintesi considerarsi una altra soluzione: attendere il quinquennio, ravvisandosi un uso solo simulato, invece che applicare subito la nullità per deposito in malafede (oppure -nel diritto italiano- dichiarare la nullità per violazione dell’art. 19 c.1: solo che nell’elenco di cause di nullità di cui all’art. 25 cpi, probabilmente tassativo, non è prevista, essendo prevista solo quella riferita al c.2 dell’art. 19  -malafade appunto- , per cui questa via pare preclusa)