Banky's EU Trade Mark Registration (EUTM) for the "Flower Thrower" has been invalidated by the EUIPO on the ground that it was filed in bad faith.
The "Flower Thrower" was originally painted by Banksy on a wall in Jerusalem in 2005, and it is one of his most iconic and most recognised works.
In 2014 Pest Control Office Limited (PCO), the company through which Banksy operates, registered the trade mark below, which represents the "Flower Thrower" work, as an EUTM:
The EUTM claimed a range of goods and services, including artists' materials and stationery, bags, sculptures, textiles, carpets, games and toys, clothing, sunglasses and commissioned artist's services.
In March 2019 Full Colour Black Limited (FCB), a UK company that sells greeting cards that reproduce Banky's works, filed an application to cancel the EUTM on the grounds that it was filed in bad faith and that it was non-distinctive.
The EUIPO issued its decision on 14 September 2020, holding that the EUTM is invalid in its entirety on the ground that it was filed in bad faith.
The SkyKick decision (C-371/18 29/01/2020) confirmed that a trade mark registration can be deemed to have been filed in bad faith in circumstances where the proprietor had no intention to use the trade mark if:
-the applicant filed the application with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties; or
-the applicant filed the application with the intention of obtaining an exclusive right for purposes other than those falling within the normal functions of a trade mark registration
In this instance, it was clear to the EUIPO that PCO had filed the application in bad faith.
Banksy would arguably struggle to enforce any copyright to prevent commercial reproductions of his works without identifying himself as the author of those works, and thus disclosing his persona. Furthermore, he may not be in a position to enjoy copyright protection in any case given the potentially illegal nature of acts of graffiti. Therefore, the EUIPO held that the purpose of filing the EUTM was purely an avenue for gaining some protection over a work of art in relation to which Banksy did not wish to enforce or could not enforce copyright. It was not, according to the EUIPO, filed with the intention of obtaining an exclusive right within the normal functions of a trade mark registration. The purpose of a trade mark registration is to enable the proprietor to protect signs for goods and services that consumers identify with that proprietor alone. In this case, the evidence reflected that Banksy had not sold or provided any goods or services under the EUTM or even attempted to create a market for such goods and services. The evidence showed that neither Banksy nor PCO were using the "Flower Thrower" as a trade mark at the time of filing and indeed had no intention of doing so until the cancellation application was filed. In October 2019, Banksy set up a physical store called Gross Domestic Product, which sold a range of goods to which his works had been applied, including the "Flower Thrower". However, the launch of the store was expressly referred to by Banksy as a reaction to the application to cancel the EUTM. The EUIPO held that this use was only to circumvent the law rather than to seek to use the EUTM to commercialise the goods in question.
This decision provides a useful summary of the SkyKick decision insofar as it relates to intention to use bad faith applications. It is also of specific interest to artists who have sought to protect representations of their works as trade marks. Unless there is an intention to use those trade marks in relation to the goods and services claimed in a trade mark registration, then there is clearly scope for them to be unenforceable and subject to cancellation. Thus, it would be sensible for artists to retain evidence of how they plan to commercialise, or have commercialised, goods and services using representations of their works as trade marks, as such evidence would be valuable in defending a cancellation action.
The decision to cancel the "Flower Thrower" registration can be appealed, so it is possible that Banksy and his representative make take a decision to do that. If no appeal is filed, or if an appeal is refused, then on the face of it any other registrations that PCO owns for Banksy's works may also be under threat if they have been filed for the same reasons.
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