Context: A dispute involving copyright and trade marks
The European Union Intellectual Property Office (“EUIPO”), the administration responsible for managing EU trade marks and registered Community designs, threw more than just flowers at Banksy when it made its decision in this case on September 14, 2020. At the forefront of the discussion was the European trade mark registration of Pest Control, which is a corporate body representing Banksy. The registration concerns a figurative mark representing Banksy’s famous Flower Thrower graffiti:
The registration was obtained in 2014 for goods and services in classes 2, 9, 16, 18, 24, 25, 27, 28, 41 and 42.
Full Colour Black is a contemporary art licensing company specialising in the commercialisation of world famous street art (such as Banksy’s), as well as a greeting card publisher. It requested the EUIPO declare the “Flower Thrower” trade mark invalid, amongst other reasons, on the basis of Article 59, 1, a) of the European Union Trade Mark Regulation, because Pest Control had acted in bad faith when filing the trade mark application.
In short, Full Colour Black argued that the mark that had been registered is a well-known artwork by Banksy, for which protection could be claimed under copyright law. Banksy, however, would not want to invoke copyright protection, claiming that “copyright is for losers”. On top of this, claiming copyright protection would force Banksy to give up his anonymity, and would limit the duration of the protection. According to Full Colour Black, the trade mark application was intended to monopolise Banksy’s artwork, not under copyright law, but under trade mark law (which under certain conditions allows for indefinite protection), without respecting the requirements of trade mark law. Full Colour Black argued that Pest Control plainly had no intention of using the artwork as a trade mark, i.e. in accordance with the essential function of trade marks, which is to indicate the commercial origin of goods or services.
Decision: invalidity due to bad faith
The EUIPO has stated that for a finding of bad faith, there must be “first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith”. Bad faith will be present when the conduct of the applicant “departs from accepted principles of ethical behavior or honest commercial and business practices”. All circumstances will be considered.
Referring to the KOTON judgment of the European Court of Justice (September 12, 2019, C-104/18 P, EU:C:2019:724), the EUIPO continues that there would be bad faith if the trade mark application is filed without any intention of using the trade mark, or with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark such as the essential function of indicating the commercial origin of goods or services bearing the mark.
It was shown that Banksy had no intention of using the artwork as a trade mark when Pest Control filed the trade mark application in 2014. In fact, Pest Control did not use it as a trade mark until 2019; only after the filing of the application for a declaration for invalidity did Pest Control eventually open a pop-up store (and thus start using the artwork as a trade mark after all), with the only purpose of avoiding a possible revocation for non-use. Banksy even explicitly stated that he opened the shop because of the trade mark dispute. According to the EUIPO, Banksy admitted in this way “that the use made of the sign was not genuine trade mark use in order to create or maintain a share of the market by commercialising goods, but only to circumvent the law”.
As a consequence, the EUIPO established that there was no intention of genuinely using the sign to commercialise goods or provide services at the time of the filing of the trade mark. The use was only made with the intention of obtaining an exclusive right to the sign for purposes other than those falling within the functions of a trade mark. The contested EUTM was filed for Banksy to have legal rights over the sign as he could not (or would not) rely on copyright, without any intention of using that sign as a trade mark. Bad faith was thus established, and the EUIPO has now declared the trade mark invalid.
A trade mark application can be found to have been filed in bad faith if there is no intention to actually use the registered trade mark as a trade mark, that is, to indicate the origin of goods or services. This appears to exclude the possibility of protecting artworks as such as trade marks (in a way similar to copyright protection), when the artist (or his/her representative) does not intend to use such artwork as a trade mark.
The decision might also serve as a warning not to disclose all legal tactics in press releases or social media, especially if such communications might indicate the intention to circumvent legal rules.
Pest Control can still appeal the EUIPO’s decision.