Banksy makes a monkey out of trade mark protection

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If copyright is for losers, trade marks certainly seem to be for Banksy. Here, our expert Sharon Kirby breaks down the latest instalment in the elusive artist’s colourful history with intellectual property law — and asks what exactly is required for a bad faith argument to be successful…

Greetings from the courtroom

UK greetings card company Full Colour Black Limited (FCB) — which uses many of Banksy’s famous artworks on its products — may need a new line of condolence cards this month. The EUIPO Appeal Board has found in favour of Banksy’s handling company Pest Control Office Limited (Pest Control), allowing his artwork to retain trade mark protection.

Pest Control has successfully registered a dozen of the secretive artist’s most widely known works as trade marks. Notably, these include ‘Flower Bomber’ and a placard-carrying chimp entitled ‘Laugh Now But One Day We’ll Be In Charge’. Invalidation actions by FCB followed, including those against a 2014 filing for the former and a 2018 filing for the latter.

FCB’s challenges claimed that the images should not have been registered because they did not possess sufficient distinctive character to be recognised as a badge of origin — rather, the images should be viewed as ‘purely artistic’ or otherwise ‘decorative’ — and further would be descriptive of the items for which protection was sought (e.g., greetings cards). FCB also claimed that the filings were made in bad faith.

The bad faith argument

An allegation of bad faith is a serious one that effectively claims an applicant had a dishonest intention when filing for a trade mark. In its early challenges, FCB alleged that Banksy had no genuine intention to use the artwork protected by his trade marks in a commercial sense. This is required to generate consumer recognition of the goods and services being provided under the ‘Banksy’ brand.

Creative works are generally protected by copyright. However, the Scarlet Pimpernel of the art world has — on more than one occasion — made plain his position that ‘copyright is for losers’. Certainly, aside from an anarchic stance, Banksy’s ability to use copyright as an enforcement measure would most likely be scuppered by his desire to have his true identity remain hidden.

It was alleged that, by filing trade mark applications, Banksy was trying to find a solution that enabled him to protect his artwork against commercial exploitation by unauthorised third parties, but without the need to use copyright enforcement measures.

While the EUIPO does not require an applicant to state in the application form that they have a bona fide intention to use a trade mark (as is required in the UK), Art 59 EUTMR does make clear that if an applicant has no intention to use a mark for the goods and services filed — and their aim is to purely undermine a third party’s interest, in such a way which would be at odds with the usual honest practices — this can count as bad faith.

Likewise, trying to obtain a registration for reasons other than the essential functions of a trade mark may also fall foul of a bad faith claim. Following the Arsenal Football Club v Reed case, the ‘essential function’ goes beyond guaranteeing the origin of goods or services to other functions (including the quality of goods and communication, investment and/or advertising), so that an image on a greetings card or t-shirt may be seen as more than mere decoration.

Copyright is for losers (and other unfortunate statements)

In the earlier EU case (on the ‘Flower Bomber’ registration), Pest Control’s intentions to put the mark to commercial use were found lacking and the application was cancelled. Likewise, in ‘Laugh Now’ at the EUIPO Opposition Division, the invalidation action brought by FCB was successful. The ruling concurred with FCB that Banksy’s political stance on copyright — together with subsequent statements by Banksy and his lawyer/director of Pest Control about commencing use in the face of the Flower Bomber challenge — allowed his lack of intentions to be inferred. These included statements that producing items for his pop-up viewing shop and related online store (advertised with the slogan ‘…where art irritates life’), were done simply for “fulfilling trade mark categories under EU law,” and that is “not a very sexy muse”.

When reviewing the appeal made by Pest Control, the Board of Appeal confirmed that in considering the applicant’s intentions on filing the mark, earlier statements made by Banksy would not preclude the filing of trade mark applications. He was entitled to free speech, and the relevant time for assessing intent was upon filing — not years before or after. Even if there was a link between the issues faced by Banksy in asserting his copyright protection, one could not extrapolate that he/his company had no intention to use the mark. Hence the statement ‘copyright is for losers’ did not impact on the trade mark invalidation case.

On the question of the hasty pop-up store, it was noted that this was largely brought into being in connection with the ‘Flower Bomber’ case, and that at the time that registration had entered the period (five years after the registration date) by which a non-use cancellation challenge could be filed. This was not the situation in the present case, which did not hit the five-year deadline until 2024.

Another issue brought up was Banksy permitting fans to use his artwork for non-commercial purposes. Again, encouraging small scale creative usage of his artwork by individuals for personal amusement or activism did not preclude his own intention to use and commercialise his images. In any case, it was always open to artists to change the extent of any permissions granted to third parties in using artworks at a different point in time.

While the battle is won, is there more to come?

It is not yet known if further appeals may be brought on the interpretation of the intentions of Banksy and Pest Control. However, FCB could (at the relevant time) file a non-use cancellation action if genuine trade mark use has not started by the five year deadline — or if there has been an uninterrupted period of five years of non-use.

While the website of Gross Domestic Product (‘the Homewares Brand from Banksy’) remains live, many of the items listed there appeared to be one-off or limited-edition artworks. When checking in November 2022, the items were said to be out of stock, even those which could be more easily mass-produced. Mugs, t-shirts and the like did include a note to say “This item is unlimited. Releases may be staggered if demand outstrips production”. Token use manufactured purely to maintain a registration should not be allowed to prevent a non-use cancellation claim. Unless Gross Domestic Product is an ongoing concern with a regular output of products, a new challenge may lie ahead once the five-year limit is reached, potentially changing the position again (unless it is able to re-file ad infinitum).

A fair decision?

The Board of Appeal decision seems fair overall in allowing Banksy to control and commercialise the work he has created — but one must wonder just what type of evidence is needed to succeed in a bad faith intention case. Have his various statements made against copyright and describing a formulaic box-ticking exercise on trade mark use been taken with the usual humorous and controversial spirit in which we usually see the artist operate? Yes, in theory a proprietor should be allowed five years from registration to commence use, but what level of contrary evidence is needed to show lack of genuine intention to use the mark protected in a trade mark sense?

Mere days before the time of writing, Banksy faced uproar for encouraging his followers of the shoplifting persuasion to take clothes from the Guess Store in London, saying: “Please go to GUESS on Regent Street. They’ve helped themselves to my artwork without asking, how can it be wrong for you to do the same to their clothes?”

Given the cutting and witty artistic commentary which made his work so successful in the first place, I guess we shouldn’t expect anything less than a bit of tongue-in-cheek rule-bending when it comes to protecting his intellectual property.