Recently, the European Union Intellectual Property Office (“EUIPO”) invalidated the trademark registration for Banksy’s popular artwork of the “Flower Thrower” image. The dispute between the world-famous anonymous street artist known as Banksy (or rather the proprietor of the trademark – Pest Control Office Limited – as Banksy continues to remain anonymous) and Full Color Black – a UK-based greeting card company that often uses Banksy’s artwork- began in March 2019 when the former requested the invalidity of the trademark that protected the “Flower Thrower” under trademark No. 12 575 155, one of Banksy’s most popular graffiti that first appeared in 2005 on a wall in Bethlehem (Israel).
Back in 2014, Banksy’s art and legal representatives – Pest Control Office Limited – successfully formalized a trademark petition for the “Flower Thrower”, granted by the EUIPO. However, in 2019 Full Color Black contested this registration claiming bad faith.
In response, Banksy opened his own stationery and decoration store in Croydon called Gross Domestic Product, with the sole intention -according to the artist himself and his legal representatives- of complying with the requirements of use necessary to maintain the registry of the brand.
In the invalidity or cancellation proceedings instituted before the EUIPO, the applicant – Full Colour Black Limited – relied on Article 59(1)(a) of the EU Trademark Regulation (“EUTMR”) invoking the ground of bad faith. The applicant relied on a decision of the Board of Appeal of 22/07/2019, R1849/2017-2 and the Attorney General’s opinion in relation to the case C 371/18, Sky Plc v Skykick to argue that where there is no intention to use a sign as a trade mark and to obtain a collateral benefit in the obtaining of a trade mark, it constitutes an abuse of the system and an act of bad faith. The proprietor of the trademark relied on the judgment of 06/09/2018, C-488/16 P, NEUSCHWANSTEIN, EU:C:2018:673, § 82-84 to state that a party that registers a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith.
Notwithstanding the arguments put forth by the proprietor, the EUIPO eventually considered that the artist never had a real intention to use the work registered as a trademark to commercialize goods but to circumnavigate the law. The EUIPO concluded that “these actions are inconsistent with honest practices”. Justifying the reasons for its conclusions, the EUIPO noted as follows:
“Banksy has chosen to remain anonymous and for the most part to paint graffiti on other people’s property without their permission rather than to paint it on canvases or his own property. He has also chosen to be very vocal regarding his disdain for intellectual property rights, although clearly his aversion for intellectual property rights does not annul any validly acquired rights to copyright or trademarks. It must be pointed out that another factor worthy of consideration is that he cannot be identified as the unquestionable owner of such works as his identity is hidden; it further cannot be established without question that the artist holds any copyrights to a graffiti. The contested EUTM 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. Therefore, the filing of a trade mark cannot be used to uphold these rights which may not exist, or at least may not exist for the person claiming to own them.”
This decision opens the door to similar procedures in relation to the rest of Banksy’s artworks – currently registered as trademarks of the European Union – putting Banksy in a very interesting crossroads between protecting his rights to his works and preserving his much-coveted anonymity.
Read the full opinion of the EUIPO here:
Reported by Elisa Garcia, Student Ambassador