Mariah Carey - Banksy

MARIAH CAREY 

As we reported last week, the $20 million lawsuit Mariah Carey was facing over the title of her classic Christmas hit “All I Want for Christmas Is You”, has been dropped. The hit has become the most profitable Christmas song to date, bringing a financial reward of $2,5 million in royalties each year. 

Following this Christmas hit, Carey was popularly dubbed the Queen of Christmas. 

In this context, Carey’s company (Lotion LLC), filed an application before the United States Patent and Trademark Office (USPTO) to register the word “Queen of Christmas” as a trade mark, as well as other word marks such as “QOC” and “Princess of Christmas”. 

However, another US singer, Elizabeth Chan, filed an opposition against the registration of the contested trade mark, claiming that she was dubbed the “Queen of Christmas” years earlier, due to her original festive records. 

Moreover, the goods for which registration was sought, were not only related to the music business, but also for clothing, liquor products, masks or dog collars, meaning that Carey would have a monopoly over the term “Queen of Christmas” for a wide variety of goods related to the festive period. 

Carey’s company did not reply to the opposition in time, and therefore the trade mark sought was not granted. 

BANKSY

Banksy, the worldwide renowned street artist, has been facing a challenge to one of his trade marks.

The trade mark in question concerned his 2002 art work “Laugh Now But One Day We'll Be In Charge”, spray paint and emulsion on paperboard, showing a black ape with an empty sign board hanging from its neck.

In 2019, the artist filed an EUTM application before the EUIPO to register the above-mentioned sign as a figurative mark. Registration was granted the same year. Some months later, the greeting card company “Full Colour Black Limited” filed an invalidity proceeding request, alleging that the trade mark was filed in bad faith and that the work was not distinctive. 

The Cancellation Division of the EUIPO issued a decision stating that the EUTM application was filed in bad faith, arguing that the trade mark was filed without intent to use it. Allegedly, the artist was seeking trade mark protection as a way to protect his work in a way that would substitute copyright. Indeed one of the limitations of copyright protection is that in case of infringement, Banksy wouldn’t be able to take enforcement measures without having to disclose his identity.

The Boards of Appeal (BoA) of the EUIPO annulled the Cancellation Division’s decision, as they considered that Banksy’s opinions about copyright and his willingness to preserve his anonymity are protected by freedom of expression. Moreover, the EUTMR foresee a 5-year grace period for using a registered trade mark. Therefore, since the 5-year period has not yet passed, it is impossible to state that Banksy has not put the mark to use, as he still has time to do so.

As regards the lack of distinctive character, the Board considered that “The contested sign consisting of the representation of an ape wearing a label which is empty is contrary to the views of the Cancellation applicant not merely an ornamental feature which will go unnoticed but is rather an unusual combination of elements as the ape wearing a white label which is quite striking and will be kept in mind by the consumers”.

Let’s see if an appeal will come!