Banksy, the British artist best known for his street art and political activism, has been found to have acted in bad faith in registering a trade mark of one of his best known works, The Flower Thrower.
Banksy had registered the well known image as a trade mark with the European Union Intellectual Property Office (EUIPO). That office has recently declared his registration as invalid on the grounds of bad faith.
EUIPO decided the reason he applied for the trade mark was to attempt to overcome the fact that he could not rely on copyright rights.
But EUIPO decided that was not the function of the trade mark registration process.
A UK greeting card company, Full Colour Black, had applied to EUIPO to have the registration of the trade mark declared invalid. It claimed Banksy had never used the image as a trade mark and he had provided the image free of charge on his website to be downloaded by anyone who chose.
Banksy had previously asserted that “copyright is for losers” and the public should be entitled to use any copyright works.
Full Colour Black claimed the reason Banksy had not registered the image as copyright was because he would lose his anonymity, something he cherishes. The trade mark application was made to get around this and would have allowed him to obtain US trade mark registrations.
Full Colour Black stated that his trade mark registration was, therefore, made in bad faith and should be declared invalid.
In addition it was claimed he had set up a pop up store in South London to make use of the image in order to show he was actively using the trade mark, something denied by Full Colour Black. But he had set up this store long after registering the trade mark.
Decision of EUIPO
EUIPO agreed with Full Colour Black that at the time of the registration of the trade mark Banksy had no intention of using the trade mark. Using the trade mark subsequent to the application may not be sufficient to avoid the bad faith label.
The European Union Intellectual Property Office (EUIPO) held that there was sufficient dishonest intention shown in the setting up of the pop up shop and that it was done to circumvent the law.
EUIPO declared the trade mark invalid.
In assessing bad faith EUIPO set out the criteria it will use as :
- An action which shows dishonest intention
- Conduct which departs from principles of ethical behaviour
- An objective standard for assessing the action in question
If you are going to register a trade mark you should have the intention of using it as a badge of origin at the date of registration, not some later date.
A broader question arises as to whether graffiti can have the protection of copyright and intellectual property laws. EUIPO made comments calling this into question on the grounds that
- street graffiti involves the commission of a criminal act on somebody else’s property
- putting up graffiti involves the viewing and taking photographs of the work by the general public which would make it difficult to claim copyright infringement.