Banksy’s loss of his flower bomber trade mark on the grounds of bad faith has been widely reported[i]. At first sight it seems strange that the registration of one of the artist’s most well-known graffiti artworks, in which he undoubtedly has a huge public reputation, should be regarded as being in bad faith. The answer lies partly in the commercial nature of trade mark law, which protects the use of logos in the course of trade rather than artistic integrity, and partly in Banksy’s injudicious public comments.
In 2014 Pest Control Office Ltd (Pest Control), a handling service that acts on Banksy’s behalf, registered an EU trade mark (EUTM) for “The Flower Thrower” at the European Union Intellectual Property Office (EUIPO).
In 2019, a UK graffiti greeting cards company named Full Colour Black (“Full Colour”) applied to have this EUTM declared invalid. They argued that the mark should be ruled invalid on grounds of bad faith.
Mark invalid – no genuine commercial use intended
On 24 September the EUIPO, agreeing with Full Colour, declared the mark invalid on the grounds of bad faith. A major factor was that according to the evidence before the Office, neither Pest Control nor Banksy had had any intention of making ‘genuine use’ of the mark in a trade mark sense – i.e. they had never intended to use it in the course of trade to indicate the origin of goods or services. This was amplified by the fact that following the application to have the trade mark declared invalid, Banksy had set up a pop up shop which would allow customers to view his products and then buy them online. Although at first sight this looks like commercial use, Banksy had stated very publicly that the motivation for this pop up shop was for the purposes of the trade mark dispute. This was unfortunate in terms of trade mark law, because use which is purely intended to bolster the validity of the mark does not count as genuine use. The pop up shop and publicity around it was a major reason for the loss of the mark.
A tricky area
Although it is clear that artworks can be validly registered as trade marks and that this protection can exist in parallel to copyright protection where applicable, this is often a tricky area for trade mark owners. Trade marks based on famous artworks are, for example, frequently vulnerable on the ground that they are non-distinctive, i.e. members of the public are unlikely to regard them as signs indicating the commercial origin of goods but rather simply as artworks. Although this argument was raised in this case, the Office does not decide on it as the issue of bad faith decided the matter without the need to look further.
We now wait to hear whether Banksy will appeal the ruling on bad faith. One could perhaps see a glimmer of hope here in that bad faith requires a dishonest intention. Although previous case law indicates that such an intention is likely to be present where there is no genuine intention to use, it might perhaps be argued that this case involved special circumstances and that most people would not regard Banksy’s actions as dishonest. In view of the speculation in the media that this case could result in Banksy losing more registrations, a decision to appeal does not seem unlikely.
[i] European Union Intellectual Property Office cancellation decision No 33843 14.09.2020