The EUIPO’s Cancellation Division has declared invalid the EU trademark registration covering Banksy’s iconic “Flower Thrower” on the ground of bad faith, finding that at the time of filing there had been no intention to use the trademark and that use began long after the cancellation action was filed, but only to avoid losing the trademark on the ground of non-use, as publicly stated by the artist himself.
Banksy is the stage name of a street artist who is famous worldwide but has always kept his real identity secret. Banksy has stated several times that his works, usually spray-painted in public places on walls, in subway carriages and the like, are free for everyone to use upon condition that such use is not for profit. He has repeatedly expressed contempt for the idea of protecting intellectual property rights.
In recent years the popularity of Banksy’s works caused a susbtantial demand for reproductions of his art and for Banksy-themed merchandise in general, which was met by a number of producers and sellers of such products, unauthorised by the artist.
In order to maintain control of the use of his works, the artist began to take steps to enforce his copyrights in court, but his decision to continue to keep his real identity secret proved to be a hindrance (also in an Italian court, as we reported here), which is not surprising since intellectual property rights must be attributed to a clearly identified owner in order to be enforced.
Banksy thus attempted to circumvent this problem by registering as trademarks of the European Union (EUTMs) some of his most iconic works, including “The Flower Thrower”, granted registration on 29 August 2014 and pictured here. In order to maintain Banksy’s anonymity, the trademarks were registered in the name of Pest Control Ltd., a handling service acting on behalf of the artist.
An application to cancel “The Flower Thrower” trademark was filed by Full Colour Black Limited, a greeting cards seller and notified to Pest Control Ltd. on 20 June 2019.
Months after the cancellation action was filed, Pest Control Ltd. opened an online shop called Gross Domestic Product, selling official Banksy merchandise.
On 14 September 2020, the Cancellation Division (CD) of the European Union Intellectual Property Office (EUIPO) issued its decision upholding the cancellation action on the ground of bad faith.
Based on the evidence produced by both parties in the dispute, the CD found that at the time Pest Control Ltd. filed the application for registration of the EUTM, Banksy had had no intention to use the mark in relation to the contested goods and services. He only began using it years later, after the cancellation action was filed, and stated on several occasions that such use was only to overcome EU laws regarding the issue of non-use in relation to a trademark dispute.
But does such behaviour amount to “bad faith” under the European Union trademark law?
The CD found that it does according to the case law of the Court of Justice of the European Union, which held in its SKY ruling (C-371/18), that a trademark application made without any intention to use the trademark in relation to the goods and services (…) constitutes bad faith (…) if the application had the intention either of undermining, in a manner inconsistent with honest practices, the interest of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trademark.
The CD concluded that the above applied to the case at issue, as the contested trademark “was filed in order for Banksy to have legal rights over the sign as he could not rely on copyrights, but that is not a function of a trademark. Therefore, the filing of a trademark cannot be used to uphold these rights”, and declared “The Flower Thrower” trademark invalid.
The CD’s decision may be appealed within two months from the date of notification.