EUIPO cancels Banksy’s ‘bad faith’ trademark

The European Union Intellectual Property Office (EUIPO) yesterday, September 14, cancelled street artist Banksy’s ‘flower bomber’ trademark after concluding that it had been filed in bad faith.

Greetings card company Full Colour Black had, in March last year, petitioned the EUIPO to cancel Banksy’s trademark for a graphic representation of his famous ‘flower bomber’ painting, on the grounds that the artist has made no commercial use of it.

Then, in October, the street artist was “forced” to set up a homeware shop in south London to establish use of his IP, after his trademark was threatened by the cancellation proceeding.

At the time, Banksy said he was forced to open the shop—which sells merchandise including toys and homewares such as rugs—in order to defend “the trademark I hold to my art”.

Banksy went on to state: “Sometimes you go to work and it’s hard to know what to paint, but for the past few months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law.”

Bad faith

It seems that these statements were his undoing—according to Hazel Tunney, partner at Tomkins & Co, Bansky’s own statements about his reasons for opening the pop up shop “ended up being used against him, almost devastatingly so”.

It seems that these statements were his undoing—in yesterday’s decision, the EUIPO concluded that Banksy’s “own words and those of his legal representative, unfortunately undermined” his case.

“Thus it must be concluded that there was no intention to genuinely use the sign as a trademark and the only eventual use made of the sign was made with the intention of obtaining an exclusive right to the sign for purposes other than those falling within the functions of a trademark,” said the office’s Cancellation Division.

Finding that the trademark should be declared invalid, the office noted that Banksy didn’t have any intention of using the trademark in relation to the contested goods and services at the time of filing.

The office added that Banksy didn’t plan to use the mark as a trademark to commercialise goods and carve out a portion of the relevant market, “but only to circumvent the law”.

“These actions are inconsistent with honest practices. They show that his intention was to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trademark,” added the Cancellation Division.

Anonymity and copyright

Speaking to WIPR, Aaron Wood, Full Colour Black’s representative and trademark attorney at Blaser Mills, said: “If this wasn’t Banksy we would be wondering what kind of person this was to create evidence on the fly to try to win a case, and I dare say that any party coming up against Banksy from now on will be keen to check the credibility of the evidence and may rely upon this case as similar fact evidence of his willingness to create evidence to try to assist his case.”

According to Wood, yesterday’s decision will mean that Banksy will need to retreat back to using copyright if he wants to sue someone for his images.

However, the EUIPO had stated that Banksy’s anonymity was an issue, with the office claiming that Banksy’s choice to remain anonymous meant that he could not be identified as the “unquestionable” owner of the works.

The office added that to protect Banksy’s right under copyright law would require him to lose his anonymity and that there are a number of legal issues which could make it difficult for him to claim copyright over the work.

“The contested EU trademark was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that is not a function of a trade mark,” concluded the EUIPO.

Wood added that Full Colour Black had not challenged Banksy’s ‘signature’ mark or the word ‘Banksy’, so parties will still be risking infringement proceedings if they use those marks or include them in images they use.

“It’s open to Banksy to look at these trade mark registrations he has made around the world for his art works and to unilaterally withdraw them, or he can wait for the cascade of challenges that will inevitably come. In the EU he already has a number of his other registrations under challenge from us,” said Wood.

Sharon Kirby, senior trademark attorney at UDL, noted that the ability of Banksy to claim copyright in these cases is touched upon, but not scrutinised in detail.

“Leaving aside any moral rights (in the legal and general sense) which Banksy might claim in the work, the decision given his apparent parodying of the legal position, can only be correct,” she said.

According to Kirby, Banksy may have been better served concentrating on the point that “he was allowing only non-commercial use of his artworks, and perhaps looking to commercial items himself, such as a DIY greetings card kit which allows you to join his other artwork with your own, thus upholding his general position on copyright whilst still branding the packaging on his goods with a ‘flower bomber’ trademark tag”.

A broader threat?

It’s clearly a significant decision, in particular for artists, added Tunney. “It highlights the EUIPO’s position that trademarks have to be used—and genuinely used —as trademarks,” she said.

Chris McLeod, trademark attorney at Elkington + Fife, said: “The impact is that where it can be shown that an application is filed in bad faith because the party was trying to circumvent issues by obtaining a potentially indefinite monopoly, the owner will most probably lose its registration.”

He added that care should be taken when making public statements which might be used to support a third-party application for cancellation.

While yesterday’s decision may concern other artists, Wood is confident that, for those who use more complex designs as trademarks, this case should not be seen as a broader threat.

Yesterday’s decision may concern other artists, but Wood is confident that, for those who use more complex designs as trademarks, this case should not be seen as a broader threat.

He concluded: “Banksy simply got caught out trying to abuse the trademark system. If you are using a trademark then protect it, but don’t try to game the system.

“The EUIPO and the UK Intellectual Property Office (IPO) have both shown increasing realisation that trademarks are a ripe feeding ground for abuse, and actions like this can be seen alongside cases like Sky v Skykick and the IPO’s revocation of most of O2’s ‘Guru’ mark for non-use.”

Kirby added that the decision is important in highlighting the need for a proper intention to commercially exploit the trademark, even without the need to declare any type of bona fide intention on filing.

“However, the question of whether an art work which is widely known can function as a trademark is left for another day,” she concluded.

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