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June 30, 2021

The Artist Banksy

Interplay between Bad Faith and Intention to Use a Trademark in the EU

By Anne M. Long

©2021. Published in Landslide® Extra, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In September 2020, the European Union Intellectual Property Office (EUIPO) upheld an invalidity action brought by Full Colour Black Limited against Pest Control Office Limited's European Union (EU) trademark registration for the logo, known as the "Flower Thrower", "Flower Bomber" or "Love Is In The Air."

Pest Control is apparently the company of the internationally known but anonymous street artist Banksy, and The Flower Thrower is probably his most recognizable work. Pest Control owns EU and UK trademark registrations for many other Banksy artworks.

Banksy is a British artist whose stencil-style graffiti pieces are famed for their political and social statements. He is a controversial artist, well known for his strong views against capitalism. His website has previously stated that his works are free to be photographed and reproduced for personal use, but never for commercial use. In October 2018 he hit headlines worldwide after his "Girl with Balloon" art piece was partially shredded through the bottom of the frame as soon as it was sold at auction. Banksy later claimed responsibility for the stunt stating he had altered the frame years earlier in case the artwork was ever put up for auction--further demonstrating his anti-capitalistic views.  Banksy is also known for his dislike of intellectual property laws and is claimed to have said "copyright is for losers." 

Full Colour Black is a publisher of greeting cards, which often feature famous artworks. At the time of writing, their webpage entitled "Graffiti" lists numerous greeting cards which feature Banksy works. 

The Flower Thrower trademark registration was invalidated in whole on the ground of bad faith, owing to Pest Control and Banksy's lack of intention to use the logo as a trademark in the EU. Pest Control did not challenge the decision which led to the registration being removed from the register in December 2020. This decision highlights that in the EU, trademark protection is reserved for those signs which are intended to be used as a trademark to identify the commercial origin of goods and services, irrespective of other intellectual property rights which the proprietor may own in the sign.  

Bad Faith and Intention to Use in the EU and UK

In the EU, the term "bad faith" is open to interpretation since there is no precise legal definition. EU case law has come to summarize the concept of acting in bad faith as conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices. The test is subjective based on the party's intention measured against an objective standard and is judged at the date of filing the trademark application.  Evidence dated before or after the filing date can nonetheless be useful. The burden of proof lies with the party bringing the claim to show there was bad faith on the balance of probabilities when all factors are considered. Good faith is thus presumed until proven otherwise. 

Although the UK has now left the EU, the UK laws relating to bad faith are currently aligned with those of the EU. "Bad faith" is a broad concept which could apply to a variety of circumstances such as applying for a trademark belonging to another party, applying for protection in respect of goods or services that the mark will not be used in connection with, or applying for a sign that will not be used as a trademark. In the EU, it is possible to seek to cancel a registration on the ground that it was filed in bad faith, but an equivalent ground of opposition is not available. In the UK, both opposition and cancellation proceedings can be brought on the ground that the application was filed in bad faith. 

Unlike in the U.S., the EU and UK trademark systems do not require applicants to specify whether the mark has been used or will be used, and do not require the applicant to demonstrate or declare that use has been made to obtain registered protection. Instead, UK and EU registrations become vulnerable to a non-use cancellation action five years from the grant date and will be struck off the register in part or in full if the proprietor is unable to demonstrate genuine use in event that a cancellation action is filed. The onus thus falls with the trademark proprietor. This system serves to clean the registers of any registrations which prevent fair competition by blocking third parties from using a mark that is not in use, much like equivalent non-use cancellation actions and Declarations of Use in U.S. trademark law. 

It is also possible for an aggrieved party to challenge the proprietor's intention to use the trademark. A UK application includes a declaration that the applicant has a bona fide intention to use the trademark in respect of all the goods and services. While there is not an equivalent declaration within EU applications, there is an overriding principle that any application must be filed in good faith and in accordance with trademark principles. 

Filing an application for exclusive rights of a trademark with the sole aim of undermining third party interests by blocking their use and registration of that trademark is an abuse of the system. The EUIPO found Banksy and Pest Control to have acted in this way when filing the application for the Flower Thrower logo. In the EU, the purpose of a trademark is to identify origin and not to prevent another party from using or registering that sign, and the application was therefore filed in bad faith. 

The Banksy Case

Full Colour Black submitted that Banksy had never produced the Flower Thrower image, except as a piece of art, and never had any intention to use it as a trademark to denote origin.  Pest Control was not able to produce any evidence of Banksy having sold, produced, or provided any products or services under the Flower Thrower logo. Under EU law, this fact alone is not sufficient to prove bad faith because it is plausible for a party to intend to use a trademark when filing an application, but later fail to use it. 

In a twist of events, Banksy opened a store in London with the name "Gross Domestic Product" shortly after the invalidation proceedings commenced. Canvases of the Flower Thrower were displayed in the windows, but the store was not open to the public. Instead, products could be purchased online after customers were vetted to ensure they were not art dealers and would not resell. Banksy issued a statement in which he said the following:

"For the past few months, I've been making stuff for the sole purpose of fulfilling trademark categories under EU law." "I still encourage anyone to copy, borrow, steal, and amend my art for amusement, academic research or activism.  I just don't want them to get sole custody of my name." <\/blockquote>

Banksy's words were used against him as evidence that he was using the trademark for the sole purpose of validating the registration to maintain the exclusive right in the artwork. The use of the trademark was not genuine and seemed to have been arranged to assist in the invalidation proceedings and/or avoid a non-use cancellation action being brought. Either way, the use was dishonest and designed to circumvent EU trademark laws.    

The EUIPO ultimately held that the application was filed to obtain legal rights in the artwork since Banksy could not rely on copyright due to his anonymous persona. Because this is not a function of a trademark the application was found to have been filed in bad faith. 

Copyright Considerations

Artists typically rely upon copyright--not trademarks--to protect their artworks. The EUIPO has clarified that ownership of copyright does not preclude a party from owning a valid trademark registration for a reproduction of the artwork as the copyright and trademarks systems are not mutually exclusive. However, the trademark system cannot be used to indefinitely extend the copyright of the artwork or to circumvent the requirement of proving copying in the event of an infringement. 

To enforce copyright Banksy would be required to reveal his identity to establish that he qualifies for protection and owns the right. The EUIPO raised other potential reasons that could prevent any copyright claim by Banksy--including the possibility that copyright does not exist based on the criminality of graffiti, and the argument that the artwork was a gift to the owner of the property on which the work was graffitied. There are arguments that Banksy would still obtain copyright in each of these scenarios but both lines of thought were quickly dismissed as not relevant to the proceedings. 

Would an assignment of the copyright to Pest Control allow Banksy to enforce his rights? Not unless he reveals his identity within the assignment document. As the assignment document would need to be disclosed to third parties to prove the chain of title, it is doubtful that this is a viable course of action for him. Similarly, moral rights will not provide any assistance as they simply allow Banksy to be recognised as the creator of his artworks or object to the distortion or mutilation of the works. 

It thus appears to be increasingly unlikely that copyright enforcement will ever be an option available to Banksy.

As of February 2021, Full Colour Black has filed equivalent invalidity actions against six of Pest Control's EU registrations for Banksy artworks, including a further EU registration for the Flower Thrower logo which was filed shortly after the initial invalidation action was brought. The six UK registrations for those artworks which were created under Brexit provisions will be automatically cancelled if those actions succeed, which appears very likely in the light of the recent decision.

It seems that the very high-profile but anonymous Banksy will be unable to enforce any intellectual property rights in his artworks in the EU and UK--unless he is prepared to reveal his identity. 

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    Anne M. Long is an Associate at Forresters IP LLP, working from its offices in Birmingham, England. She specializes in trademark prosecution, exploitation, enforcement, and portfolio management in the UK and EU.