The purpose of copyright is to protect original artistic works, but Banksy is well-known for his view that “copyright is for losers”, which may well be linked to the fact that he would likely lose his anonymity by asserting copyright over his works. He has instead sought protection from commercialisation by third parties of his works through various trade mark registrations. However, a recent decision by the EUIPO has put an end to his trade mark registration protecting one of his most famous pieces of art.
In 2014, Pest Control, a handling service acting on behalf of the artist Banksy, obtained the registration of an EU figurative mark, depicting one of Banksy’s best-known artworks, the ‘Flower Thrower’, for a wide range of goods and services.
In 2019, a card company, called Full Colour Black, that reproduces street art on cards and related products, applied to invalidate the trade mark in its entirety on the grounds of bad faith. The mark was an exact reproduction of one of Banksy’s most iconic and famous pieces of art. However, according to Full Colour Black, it has never been used as a trade mark, and Banksy himself has only ever reproduced the sign as an artwork and not in connection with the provision of the goods or services the mark covers. Full Colour Black further asserted that the trade mark was registered without any intention other than to monopolize the image for an indefinite period, contrary to the principles of copyright law, and to avoid Banksy having to protect his rights under copyright law, which would require him to reveal his true identity.
In response, Pest Control submitted that Full Colour Black had not demonstrated bad faith and that the evidence provided had not shown that Banksy has allowed the general public ‘free reign’ to reproduce his artwork for commercial purposes. Furthermore, Pest Control argued that a party that registers a trade mark for the legitimate objective of preventing another party from taking advantage by copying the sign would not constitute an act of bad faith.
Decision of the Cancellation Division of the European Union Intellectual Property Office (EUIPO)
While there is no legal definition of ‘bad faith’, the EUIPO reiterated the Advocate General’s view from a recent case that, for a finding of bad faith, there must be:
- some action by the EU trade mark proprietor which clearly reflects a dishonest intention;
- an objective standard against which such action can be measured and subsequently qualified as constituting bad faith; and
- departure from accepted principles of ethical behaviour or honest commercial and business practices.
The EUIPO noted that, in 2019, after the application for invalidity had been filed, Banksy launched a shop which, while not open to the public, allowed customers to look at window displays before then buying the products online. The shop was launched purely with a view to trying to show use of the registered sign as a trade mark. This behaviour, according to the EUIPO, showed that the trade mark proprietor never had any intention to use the mark as a trade mark. The EUIPO therefore concluded that the mark should be declared invalid. The EUIPO emphasised that the purpose of a trade mark is to allow consumers to identify the commercial origin of the goods or services and not to simply prohibit others from registering or using signs with a view to carving out a portion of the commercial market.
This decision is a stark reminder that the EUIPO interprets the concept of bad faith broadly, meaning that there must be some genuine intention, at the date of filing, to use that trade mark as a badge of origin to sell the goods and services for which it has been registered.
The EUIPO’s decision also raises the question of whether Banksy’s other trade mark registrations may now also be at risk of invalidity on the grounds of bad faith, should that ever be called into question, if those registrations were also filed without any intention to commercially exploit the trade marks. Banksy may be reluctant to rely on copyright law to protect his artwork, as that is more likely to require him to reveal his identity if he tried to enforce it against a third party. However, if more of his trade marks are invalidated on the basis of bad faith, his options to protect his intellectual property may be limited. If Banksy does not intend to commercially exploit and genuinely use the trade marks, but has simply registered each of them for the sole purpose of preventing third parties from using them, he may be left with no choice but to enforce his rights under copyright law and reveal the man behind the spray paint.