by Jeremy Erwin October-07-2020 in Intellectual Property

A trade mark held by the famous anonymous street artist, Banksy, has been declared invalid by the European Union Intellectual Property Office (“EUIPO”). The decision by the Cancellation Division on 22 September 2020 has invalidated the mark on the grounds that it was registered in bad faith. The disputed trade mark was Banksy’s “flower bomber”, which was spray painted onto the side of a building in Jerusalem in 2005. The image depicts a protestor throwing a bunch of flowers.


Background

A company acting on behalf of Banksy, Pest Control Office Limited, applied for a European Union Trade Mark (“EUTM”) for the image in February 2014, which was successfully registered in several classes in September 2014. Under the EU Trademark Regulations (“EUTMR”) a registered trade mark may be removed if not used for a genuine purpose. A greeting card company, Full Colour Black Limited, challenged the EUTM in 2019 on the grounds that, up to that point, no merchandise or other items depicting the mark had been sold commercially by the mark holder. In an apparent response to the challenge to the mark, Banksy set up a gallery in Croydon to sell items depicting the “flower bomber” to demonstrate that he was using the trade mark commercially.


The Decision

The EUIPO concluded that the mark had been registered in bad faith and, on the evidence presented, that Banksy did not have the intention of using mark when it was filed in 2014. While there is no legal definition of “bad faith” under Article 59(1)(b) EUTMR, the EUIPO noted that it is a “subjective state” based on the applicant’s intentions on the date the trade mark was filed.  The EUIPO acknowledged that for a finding of bad faith to be made there must be:

  • Some action by the 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
  • Conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices, which are identified by assessing the objective facts of each case against the standard.

The EUIPO emphasised that the purpose of a trade mark is allow consumers to identify the commercial origin of the goods and services, and not to prohibit others from registering marks. The EUIPO found that when the application for the mark was filed, Banksy did not have an intention to use the mark for commercial goods or services.

The EUIPO accepted evidence that Banksy had stated in several publications that the gallery which he set up after the invalidity challenge was brought had been done with the specified intention of not losing the mark. It was acknowledged on behalf Banksy that the store was not open to the public and items could only be purchased after a careful vetting process to ensure the purchaser was not going to resell the items.

The EUIPO found that Banksy was attempting to use the trade mark to protect his artwork from being used commercially.  It stated that copyright is the more appropriate method of protecting artistic works, and street art could be protected if the qualifying criteria is met. However, in order to assert copyright over the image, Banksy would have to waive his anonymity.

The EUIPO decision specifically referred to Banksy’s book, Wall and Piece, where he said, “copyright is for losers” and previously permitted his images to be used as long as it was not for commercial reasons. The EUIPO questioned whether illegal street art, such as “flower bomber”, painted without the building owner’s permission was even worthy of copyright protection.

Banksy’s portfolio of trade marks is under further threat as Full Colour Black Limited has lodged six more challenges against marks held by Banksy on the grounds of invalidity.

A full copy of the decision can be found here. Jeremy Erwin’s article on a decision of the High Court of England and Wales in February 2016 relating to the ownership of street art can be found here


For further information on this or for any other Intellectual Property related issues, please contact Jeremy Erwin jerwin@hayes-solicitors.ie or Ross Magee rmagee@hayes-solicitors.ie at Hayes solicitors. 

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