Banksy famously claimed that “copyright is for losers”; however, he has been furiously fighting to maintain the EU trade mark (EUTM) registration representing one of his best-known artworks, the ‘Flower Thrower’, despite his apparent disdain for IP rights.

Background

On 14 September 2020, the EUIPO Cancellation Division decided that Banksy’s EUTM should be declared invalid on the grounds of bad faith because it was 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”.

Full Colour Black Ltd (FCB), a company that reproduces street art and graffiti on cards, applied to invalidate Banksy’s trade mark registration claiming that (1) the mark was non-distinctive and/or descriptive and (2) that the application was filed in bad faith.

FCB alleged that the EUTM registration had been filed so that Banksy did not have to rely on copyright law, which would require him to lose his anonymity. Therefore, the ‘Flower Thrower’ image was only registered as an EUTM to circumvent copyright law, which only lasts for life plus 70 years and would require him to reveal his identity. Instead, he was trying to use registered trade mark protection, which provides a perpetual monopoly and avoids the need to disclose Banksy’s identity.

Evidence

An examination of the initial evidence filed by both parties indicated that there was no evidence of Banksy selling anything under the trade mark so it could not be said that the mark was being used for commercial purposes. Further, it was shown that Banksy had freely encouraged the dissemination and publication of his works by others (although Banksy’s website did contain a caveat requesting non-commercial use only).

In the second round of evidence, the Applicant provided evidence that Banksy had begun to sell goods after the date that the application for a declaration of invalidity was filed. Banksy opened a shop, called ‘Gross Domestic Product’, which was not open to the public but allowed customers to look at window displays and buy the products online. The launch of the shop was described by Banksy as “possibly the least poetic reason to ever make some art: a trademark dispute”.

Decision

The Cancellation Division described the shop as “inconsistent with honest practices” because “the use, which was only made after the initiation of the present proceedings, was identified as use to circumvent the requirements of trademark law and thus there was no intention to genuinely use the sign as a trademark. 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.”

They also highlighted that the mystery around Banksy’s identity was disadvantageous to his case: “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… 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; it further cannot be established without question that the artist holds any copyrights to a graffiti.”

The EUIPO concluded that the EUTM was filed so Banksy could use the registration to prevent third parties commercialising his work, given the difficulties he would face trying to enforce copyright law. As there was no intention to sell goods or provide services under the mark, it was deemed to have been filed in bad faith and was invalidated in its entirety. The non-distinction grounds were not examined.

Comment

The ruling potentially puts all of Banksy’s trade marks at risk, as the majority of the portfolio is likely to be vulnerable to the same form of attack. The decision exhibits a broad interpretation of the concept of bad faith, encompassing the use of trade mark law to extend or circumvent the protection provided copyright.

Amelia Skelding 12 October 2020