On 18 May 2021, the European Union Intellectual Property Office (EUIPO) published a decision regarding an application by United Kingdom greeting card company, Full Colour Black Limited (Full Colour), against notorious street artist Banksy to declare one of his trademarks invalid. EUIPO held that the trademark, based on the artwork known as ‘Laugh Now’ (pictured below), was invalid in its entirety as it was found to be filed for in bad faith.
Between 2014 and 2018, ‘Parent/Legal Guardian for the artist Banksy’ company Pest Control filed several European Union Trademark applications for many of Banksy’s most iconic works and designs.
In 2019, Full Colour began selling greeting cards featuring these designs, such as ‘Laugh Now’ and ‘Flower Thrower’.
Later that year, Full Colour filed applications with the EUIPO to have Banksy’s trademarks invalidated. The applications were broadly based on two grounds, those being:
- Banksy never made use of the marks, except in his artistic expressions, and had no intention of commercialising or enforcing the intellectual property rights against other third parties that reproduced the designs; and
- The applications were made in bad faith.
In response to these applications, Banksy unveiled a brick-and-mortar store in the UK called Gross Domestic Product. Customers could view window displays and buy the products online after a vetting procedure to ensure that they would not re-sell the items and were not art dealers.
The EUIPO held that Banksy had acted in bad faith in seeking the trademark and his actions ‘are inconsistent with honest practices as it had no intention to use the EUTM as a trademark according to its function’.
In reaching this decision, the EUIPO relied on statements made previously by Banksy and a director of Pest Control (Mr M.S.) concerning the recently opened store and his general attitude towards intellectual property laws. In his own words, Banksy was ‘not trying to carve out a portion of the commercial market by selling his goods’. He was merely trying to fulfil the trademark class categories trademark for these goods to circumvent the non-use of the sign requirement under EU law’.
Statements such as:
‘Copyright is for losers’ – Banksy;
‘The motivation behind the venture was “possibly the least poetic reason to even make some art” – a trademark dispute’ – Banksy;
‘For the past few months, I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law’ – Banksy;
‘I still encourage anyone to copy, borrow, steal and amend my art for amusement, academic research or activism. I just don’t want [Full Colour] to get sole custody of my name’ – Banksy; and
‘Banksy is in a difficult position…Because he doesn’t produce his own range of shoddy merchandise, and the law is quite clear – if the trademark holder is not using the mark, then it can be transferred to someone who will… I proposed that Banksy begin his own range of merchandise and open a shop as a solution to the issue…‘ – Mr M.S.;
All pointed to Banksy’s application of the trademarks not being intended to provide commercial goods or services.
Another factor that weighed on the ruling was Banksy’s decision to remain anonymous to preserve the secretive persona which propels his fame and success. This factor has hindered him from protecting this piece of art under copyright laws as he cannot be identified as the unquestionable owner of such works.
This decision follows on from the EUIPO decision regarding the artwork ‘Flower Thrower’, which had an identical outcome, and there are five more similar cases before the EUIPO to be decided in the coming months. These decisions potentially have a domino effect for Banksy’s registered trademarks worldwide.
Practical Considerations in Australia
Section 62A of the Trade Marks Act 1995 (Cth) (Act) provides that:
The registration of a trademark may be opposed on the ground that the application was made in bad faith.
The Act does not define what bad faith means in this context; however, the Courts have stated that bad faith is determined on the balance of probabilities and on the basis of whether the conduct of applying for the trademark fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons: see Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)  FCA 81.
While this decision is not binding in Australia, it may prove an influential example of conduct that may give rise to bad faith and should be considered, especially when applying for international trademarks.
***Assisted by: Patrick Jamieson***
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