WIPR Five minutes with... Aaron Wood of Blaser Mills
Earlier this month, the European Union Intellectual Property Office (EUIPO) cancelled Banksy’s ‘flower bomber’ trademark after concluding that it had been filed in bad faith.
WIPR spoke to Aaron Wood, trademark attorney at Blaser Mills, who represented Full Colour Black in its trademark battle against the street artist, to discuss the strategy behind the win.
Can you explain why Full Colour Black's invalidity action against Banksy's trademark won?
While we argued a number of points that were not considered, we were successful in our argument that Banksy never intended to use the ‘flower thrower’ as a trademark, but instead wanted to protect it to avoid the issues around asserting copyright infringement.
Faced with a lack of a positive explanation from Banksy and the fact he and his lawyer came out to say that they had opened a “pop-up” shop in Croydon in order to try to win a trademark case (demonstrating a lack of good faith,) the case was rightly decided to be one of bad faith.
Can you explain the strategy behind your success in convincing the EUIPO to cancel Banksy's bad faith trademark?
It was a delicate argument, since naturally good faith is usually assumed. This meant we needed to draw together a few strands: the first was the specific circumstances of Banksy’s copyright predicament (ie, that he would only be able to sue for copyright infringement if he came out of the shadows).
We argued that various works of his were the subject of applications, meaning that it was far less likely that any of them were intended to be used as trademarks. Next, we held that he had permitted this work and others to be used as mere decoration, and had known for more than 10 years that many third parties were using the image as mere decoration, meaning he knew the public did not see it as a trademark. Finally, there were issues regarding the effect of the trademark – that it would allow him to avoid difficulties in US trademark law and would give him a monopoly on a perpetual basis.
The key thrusts were that this was an application for an improper (collateral) purpose, that Banksy knew it was not a trademark in the eyes of the public, and that it had a worrisome effect.
What was the key pillar of your argument?
The key argument when we first filed the case was that Banksy had filed it for an improper purpose, ie, to avoid issues with using copyright. The arguments took a side-step when Banksy and his lawyer came out in the press to explain the pop-up and that really helped our overall argument of bad faith.
How did Banksy’s own statement about his reasons for opening a pop-up shop to protect his IP backfire?
At a time when he should have been arguing that there was good faith (ie, a solid plan to use the ‘flower bomber’ as a trademark) or alternatively making out that our case was merely speculative, this public statement provided a very open and damaging account of an intent to “game” the system. When we filed that evidence, they simply had no explanation as to how it was in keeping with good faith.
What effect is this case likely to have on future trademark disputes?
This is a very public battle and I would imagine others will have seen the outcome and will be ready to apply to invalidate Banksy’s registrations. One of the advantages of the EUIPO office is that all the evidence and arguments can be freely downloaded, so parties will be able to see what we filed and argued, and what Banksy said (or didn’t say).
In a broader context outside Banksy, I think bad faith will be a more commonly-used source of attack. While many still hold onto the view that it is akin to fraud – and of course that is correct in many situations – the case law is clear that bad faith concerns behaviour which is inappropriate vis-à-vis third parties and the registration bodies.
Improper purpose and collateral purpose are part of that and, while “bad faith” may seem a colourful title for behaviour which is just the clever stretching of trademark law by lawyers, I think there is a lot of scope to use it.
It is possible that the European jurisdictions will look to move to a position where a party needs to have a tighter specification and rely more on confusion and unfair advantage/detriment, rather than being permitted to keep expanding their trademarks in order to rely upon the identity of goods and services.
Are you planning to take any next steps following the cancellation of the bad faith trademark?
We already have a number of cases pending on the same grounds where Banksy has made the same arguments – they are likely to have the same effect. Banksy has re-filed for the ‘Flower Bomber’ at the EUIPO, so I would imagine that will be the subject of proceedings soon, and then we will need to review the global portfolio.
This is a very particular case: Banksy has taken a very unusual position regarding copyright, and the decision of the EUIPO really doesn’t concern copyright. Even though it is mentioned in the decision, it was certainly not part of our case except insofar we said copyright was the appropriate protection for Banksy’s works rather than trademarks.
If a work is functioning as a trademark (and of course logos typically will have copyright attached to them too), then it will remain correct to protect it as a trademark if you want that protection. The law on copyright remains unchanged, such that you need to show creation and ownership. So if you are willing to come out and say (and prove) who created the work and that you own the work, then nothing has changed. If you want to stay anonymous, then there will remain evidential issues.
What are the key trends you see emerging in future trademark disputes amid Covid-19?
So far, I haven’t seen any specific changes in arguments, although arguably there are a few to be made.
First of all, with consumers doing far more shopping online there is a greater risk of damage to brands by way of inappropriate targeting, such as the misuse of domain names and keyword advertising. It is not a new area, but it clearly will become more important still.
One argument, which I have yet to see deployed, but which may make sense, relates to phonetic confusion and the wearing of masks. In the field of pharmaceutical trademarks, one of the arguments that was used for many years was the likelihood of doctor’s handwriting being misread because of their “famously scrawly writing”. In a similar way, could it be argued that some marks are more likely to be misheard when pronounced because the public will be wearing masks?
The extended use of electronic courts should also change the environment for dispute work. In my experience of trials online for straightforward IP cases (particularly trademark cases) there is a real case for them remaining online, and in-person trials may not be the constant in the future.
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