Banksy launches a pop-up shop to battle trade mark invalidation

In the beginning of October the famous street artist Banksy launched a pop-up shop in London for the sale of ‘impractical and offensive’ merchandise. The Croydon-based ‘Gross Domestic Product’ offers for sale items such as sofa cushions with the inscription “Life’s too short to take advice from a cushion” and a children’s counting toy where wooden migrant figures are loaded inside a haulage truck.

The reason behind the launch of the homeware store selling Banksy’s art is far from being poetic. The artist started selling his merchandise due to the trade mark dispute, where the greeting card company applied for an invalidation of the Banksy’s EU trade mark for ‘the flower bomb’:

Banksy’s company Pest Control Office Limited filed an application for this trade mark in various classes back in 2014.  Banksy has also obtained trade mark registrations for a few of his either iconic artworks.

In Mach 2019 a north Yorkshire based greetings cards company filed a cancellation action against the ‘flower bomb’ trade mark claiming that Banksy is using it to stop unauthorised copying of his work and “to avoid the evidential requirements of a case under copyright law” since “the ownership of copyright is difficult for Banksy to prove”.

According to the greeting cards company’s representative, they contest the validity of Banksy’s trade mark on the basis that it was registered to simply avoid evidential issues with copyright and save the trouble of filing a statement of use in the US.

Banksy’s legal team advised him to sell his merchandise and open a shop to avoid the cancellation of the trade mark for non-use and to avoid its legitimate use by third parties.

Comments

The European Union law provides for two types of cancellation procedures: revocation and invalidation. The difference is that revocation applies as from the date of the request, and an invalidation removes the trade mark registration from the EU trade mark register with retroactive effect.

The trade mark will be vulnerable to revocation, if it has not been genuinely used in trade in relation to the goods and services covered by the trade mark registration within 5 years of registration.

However, if the trade mark was applied for in bad faith as claimed by the greetings card company here, the trade mark will be subject to invalidation.

Launching a store will hardly help Banksy in either case. The applicant has not filed an application for revocation of the trade mark, and if they do so at a later date, they might argue that Banksy opened the store for the sole purpose of preserving the trade mark’s registration, which is not considered to be a ‘genuine use’. Moreover, use in the three months prior to an application to revoke being filed will generally be disregarded.

Selling merchandise is unlikely to help Banksy in the invalidation proceedings either, since it looks like the store was opened as a direct result of filing an action, which is likely to strengthen the applicant’s arguments that the trade mark was originally filed to bypass the copyright and trade mark laws and was therefore in bad faith.

This is a good reminder to brand owners that even registered trade marks can be challenged and, in certain circumstances, cancelled. You should think carefully about your trade mark registration strategy, and only register the trade marks that you genuinely intend to use in trade. Briffa is on hand to advise on all aspects of trade mark law and you can speak to one of our solicitors by calling 020 7096 2779 or emailing info@briffa.com.

Written by Anastasia Troshkova, Solicitor