Banksy, trade marks and bad faith … the plot thickens

Banksy is a street artist, political activist and film director who is based in England, but whose real name and identity remain unconfirmed.

He has had a bit of a love/hate relationship with intellectual property rights over the years. Having previously asserted that ‘copyright is for losers’, he has sought trade mark registration for some of his most famous artworks (via his company, Pest Control Office Limited) in order to prevent third parties from commercializing his artworks without his consent.

Unfortunately for Banksy, some of his trade mark registrations (including the EU trade mark registration for one of his most famous artworks: ‘Flower Thrower’) were subsequently cancelled. And various arguments/grounds were raised in previous cancellation actions, including the following:

– because Banksy’s artworks are copyright works, they could not function as signs/badges of origin (i.e. the would be perceived as artistic, decorative or ornamental works by the average consumer, and not as trade marks designating origin);

– the creation of Banksy’s artworks often arose out of illegality (e.g. as graffiti on third-party property); and

– Banksy’s trade mark applications were filed in bad faith (i.e. Banksy never intended for his artworks to be used as trade marks, and he only sought trade mark protection to avoid having to rely on copyright protection, which would require him to reveal his name and identity).

Last month, another of Banksy’s trade mark registrations (for another of his famous artworks: ‘Laugh Now But One Day We’ll Be In Charge’) came under attack. However, in this case the EUIPO Board of Appeal dismissed the claims made by the cancellation applicant and instead found in Banksy’s favour. The Board considered a number of points relating to the questions of copyright and bad faith:

– First, in relation to Banksy’s views on copyright (i.e. his publicly expressed view that ‘Copyright is for losers’, the Board found that anyone is free to publicly express their view and opinions; and pointed out that this fundamental right forms part of the Universal Declaration of Human Rights. Article 19 provides that “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”

– Second, the Board found that ‘Laugh Now’ should not be denied trade mark protection simply because it is also an artwork protected by copyright. The Board went on to say that ‘Laugh Now’ is not merely ornamental, that neither is it descriptive nor non-distinctive in relation to the goods and services covered by the trade mark registration, and that (at least in principle) artworks are eligible for protection as trade marks (whether they are protected by copyright or in the public domain).

– Third, the Board found that bad faith could not be inferred from the fact that Banksy had permitted ‘Laugh Now’ to be used publicly (e.g. the graffiti was photographed and copied by the general public). The Board stated that such public ‘use’ was not necessarily inconsistent with Banksy own intention to use ‘Laugh Now’ as a trade mark, and emphasised that such public ‘use’ was in any event largely non-commercial in nature. The Board also found that bad faith could not be inferred from the fact Banksy opted for trade mark protection for his ‘Laugh Now’ artwork, even if that decision was taken to enable him to achieve legal protection of his artwork without requiring him to reveal his identity. The Board emphasised that this in no way indicated that he was not intending/willing to use the artwork as a trade mark (something that the cancellation application was required to establish in order to demonstrate bad faith).

Briffa comment

This latest chapter in the Banksy trade mark saga is an interesting development.

First, the decision of the EUIPO Board of Appeal reminds us of the basic principle that ‘intellectual property’ is an umbrella term under which sit a number of individual rights (copyright, trade marks, design rights, patents etc.), all of which are independent of one another; and all of which function in different ways. For example: copyright enforcement requires the identification of the author, an issue that does not arise with trade marks; trade marks, registered design rights and patents all require registration in order for those rights to be valid and enforceable, whereas copyright, unregistered design rights, passing off rights and rights in confidential information require no such registration to be enforceable; copyright, design rights and patents all expire eventually, whereas trade mark rights can in theory last forever; and so on).

Second, this decision casts new light on the meaning of ‘bad faith’ in the context of EU trade mark law; and in particular it reminds us that ‘bad faith’ as a concept will be scrutinized and strictly construed by the EU courts. It is not a woolly concept and it is not enough for those asserting bad faith to point to perceived ‘bad behaviour’; rather, it requires a careful assessment of whether or not a trade mark applicant had a genuine intention to use the trade mark when the application was filed.

Briffa is a firm of solicitors who are specialists in all aspects of trade mark law and practice, including non-contentious trade mark matters (such as trade mark applications, specification drafting, and trade mark licensing and commercialisation) and contentious trade mark matters (such as oppositions, cancellations and infringements). If you have questions about protecting, commercialising or enforcing your brand/trade marks rights, please get in touch with us on info@briffa.com or 020 7096 2779 and one of our specialist trade mark lawyers will be happy to speak with you.

Written by Éamon Chawke – Partner