Intellectual Property Update: Banksy’s Bad Faith Invalidates Famous ‘Flower Thrower’ Trade Mark
06 October 2020
The Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) has recently declared that Banksy’s EU trade mark registration (“EUTM”) for one of the famous street artist's best known artworks, the Flower Thrower, be declared invalid on the grounds of bad faith. Not only has this update been widely reported in the media due to the fame of the artist in question, but the decision is also significant as the EUIPO appears to have adopted a broad view as to what may constitute bad faith in relation to a trade mark application. In addition, the decision raises important issues around the juxtaposition between trade mark law and the law of copyright, with the EUIPO emphatically holding that the trade mark in question was filed in order for Banksy to hold legal rights over the sign as he was unable to rely on copyright rights, and that is ultimately not a function of a trade mark.
The Flower Thrower
In 2014, Pest Control Office Ltd (“Pest Control”), a handling service that acts on Banksy’s behalf, obtained an EUTM for the figurative mark “The Flower Thrower” for a wide range of goods and services.
In 2019, a UK graffiti greeting cards company called Full Colour Black (“Full Colour”) applied to have this EUTM declared invalid on the basis that it was filed in bad faith.
‘Copyright is for losers’
Full Colour argued that the trade mark proprietor had made no use of the sign as a trade mark and that Banksy himself has only ever reproduced the sign as a work of art. It suggested that the sign was graffiti sprayed in a public place and that it was free to be photographed by the general public and disseminated widely. Indeed, Banksy had provided high-resolution versions of the work on his website and openly invited the public to download them and to produce their own items whilst also stating in his book that ‘copyright is for losers’ and that the public is morally and legally free to reproduce, amend and otherwise use any copyright works forced upon them by third parties. Moreover, it was argued that ‘the Flower Thrower’ EUTM was an attempt to monopolise the image on an indefinite basis contrary to the provisions of copyright law.
According to Full Colour, Banksy could not protect his own IP rights in the images via copyright law, as that would require him to lose his anonymity, which would ultimately prejudice his elusive persona. As such, the trade mark had been registered to circumvent Banksy’s inability to rely upon more appropriate IP rights. Furthermore, there had been a pattern of Banksy’s established works being registered as EUTMs so that those registrations could form the basis for obtaining equivalent US trade mark registrations. For all of those reasons, Full Colour argued that the filing of ‘The Flame Thrower’ application was made in bad faith.
In response, Pest Control submitted that Banksy cannot lose the right to file a trade mark for his work solely because he had previously made statements that ‘copyright is for losers.’ Also, in an attempt to show that he had been actively using the trade mark, after the invalidity proceedings had been initiated by Full Colour, Banksy created ‘Gross Domestic Product’, a pop-up store in Croydon, South London, which featured a three-panel ‘Flower Thrower’ print.
Full Colour referenced the fact that Banksy had publicly acknowledged that the store was launched due to a trade mark dispute, and this clearly amounted to a ‘false’ use and was merely an attempt by Banksy to frustrate the proceedings.
The EUIPO held that although there is no precise legal definition of the term ‘bad faith’, for a finding of bad faith there must be:
Some action by the EUTM 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 can be identified by assessing the objective facts of each case against the standards.
On the facts of this case, the EUIPO agreed with the arguments submitted by Full Colour and held that the EUTM should be declared invalid. According to the EUIPO, it was clear that Banksy did not have any intention to use the EUTM at the time of filing the application. In relation to subsequent use via the ‘Gross Domestic Product’ pop-up shop, the EUIPO agreed with Full Colour’s analysis that this use was carried out with the intention to circumvent the law. In the EUIPO’s decision, such actions were inconsistent with honest practices.
This decision is significant for a number of reasons. Those seeking to make trade mark applications in future should note the EUIPO’s broad interpretation of ‘bad faith’. Applicants will also need to be cognisant of the requirement to hold a genuine intention to use a trade mark as a badge of origin at the date of filing the application, as use subsequent to the mark being challenged later may not be sufficient.
Interestingly however, the decision raises more fundamental questions as to whether or not street graffiti is capable of acquiring IP protection at all. Indeed, the EUIPO ruled that “there is an argument that street graffiti, which is not carried out with the express permission of the owner of the property on which it is placed, is carried out in commission of a criminal act” and separately that “graffiti is normally placed in public places for all to view and photograph, which might also possibly annul any ownership rights in copyright.” These are novel claims being made by the Office and clearly raise more questions for future revisiting. For Banksy, the decision will be a setback in the artist's ongoing attempts to protect the IP in his works. It may also now leave other Banksy trade mark registrations equally exposed to invalidity actions. The decision is therefore unlikely to signal the end of the Banksy ‘Flame Thrower’ trade mark dispute.
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