Bad Faith Trade Mark Applications – Banksy’s ‘Flower Thrower’ Trade Mark Declared Invalid By EU Intellectual Property Office

Artist, vandal, activist, philanthropist or provocateur – whatever your thoughts on Banksy, his ability to get people talking is second to none.

Whether stencilling art onto public property, building dystopian theme parks or shredding his own artwork at Sotheby’s, we all know who Banksy is. Except, of course, that we don’t.

Therein lies the problem for Banksy – having previously declared that ‘copyright is for losers’ (a statement which, as an IP lawyer, I feel is a little bit harsh…) he has in recent years taken perhaps a more considered view to intellectual property, having understandably taken exception to those who reproduce his work for commercial gain.

Not wanting to identify himself as the author of the artistic work in question, Banksy cannot rely on copyright law to prevent the unauthorised copying of his work.

Instead, in 2014, Pest Control Office Limited (a company acting as Banksy’s agent) registered a number of his most iconic images as European trade mark for a range of classes of goods and services.

Fast forward to 2019, when an application to cancel ‘Flower Thrower’ was filed at the European Union Intellectual Property Office (EUIPO) – the applicant, who sold cards bearing a number of Banksy’s works (including Flower Thrower) sought to persuade the EUIPO that the trade mark should be declared invalid, as a consequence that the application was filed in bad faith.

Somewhat candidly, Pest Control had admitted that Banksy had only begun to sell goods bearing the mark in response to the cancellation application and to try and circumvent the law pertaining to non-use (which provides for a trade mark to be cancelled, if it isn’t put to genuine use within a specific time frame).

There being no evidence of any use or intention to use the mark prior to this, the trade mark was declared invalid as filed in bad faith.

Comment

I have seen criticism levelled at Pest Control for their candour but ultimately, what other positon could they put forward, other than the truth? The situation is a difficult one – Banksy’s persona and (arguably) the value of his works are inextricably linked to his anonymity. To prevent unauthorised commercialisation of his talent, he has very little available to him, something that was acknowledged by the EUIPO.

Notwithstanding this (and the fact that I question whether the decision is a fair one, in all the circumstances), it is nonetheless a legally sound decision; the EUIPO relied on an ever increasing body of case law surrounding bad faith. It is now beyond doubt that applying to register a trade mark to obtain an exclusive right, inconsistent with the essential functions of a trade mark (e.g. indication of origin of goods or services), will be considered to be a bad faith application. If you do not intend to ever apply the mark to goods or supply services under it, then your trade mark will not survive an invalidity challenge.

What this case shows is that, even if that application is made so as to try and protect another legitimate interest (anonymity, where that is linked to the value of your works as an artist) such an interest, in isolation, will not find protection in trade mark law.