"Copyright is for losers" says Banksy, but what about trade marks?

Banksy, the artist behind the famous "copyright is for losers" image, is apparently not too cool for trade marks as his iconic work, the Flower Thrower, found itself back in the Cancellation Division of the European Union Intellectual Property Office (EUIPO) in 2023, in a dispute around repeat filings.

Background

This decision is the newest development in the saga that is the ongoing legal battle between Banksy's holding service, Pest Control, and Full Colour Black (FCB), a British greeting card company, taking shape in trade mark disputes and, most recently, libel suits.

In 2020, Pest Control secured the registration of the figurative mark depicting the artwork known as "the Flower Thrower" as an EU Trade Mark (EUTM No 18 118 853) across various goods and services classes. The image contained in the application was identical to that in the first Flower Thrower EUTM (No.12 575 155), registered by Pest Control back in 2014 and cancelled in 2020 upon FCB's application for bad faith (no intention to use the mark).

FCB filed a request for a declaration of invalidity of the second Flower Thrower EUTM, citing bad faith under Article 59(1)(b) of the EUTM Regulation (EUTMR) and Article 59(1)(a) in connection with Article 7(1)(b) and (c) of the EUTMR.

The cancellation proceedings were suspended pending a final decision in parallel proceedings regarding the EUTM registration for Banksy's 'Laugh now, but one day we'll be in charge' piece, which concluded in late 2022 with an annulment of the Cancellation Division's cancellation of the mark by the EUIPO Fifth Board of Appeal.

Parties' Arguments

FCB argued that the 2020 registration mirrored the earlier 2014 registration, which became vulnerable to cancellation for non-use on the very day of the second filing for the Flower Thrower mark. On this basis, FCB argued that the second registration ought to be considered a repeat application made in a strategic attempt to avoid proving genuine use by re-starting the five year non-use period (a practice known as "evergreening").

FCB further argued that given that Banksy did not "use" any of the images for which registration was sought, these registrations were an attempt to skirt around the provisions of copyright law, seeking to monopolise these images for an indefinite period and to avoid the evidential burdens relating to allegations of copyright infringement (not least identifying the copyright owner – Banksy wishes to remain anonymous).

Pest Control countered, asserting a genuine intention to use the mark and calling attention to the fact that it had in fact used the mark since the action was filed. Moreover, it maintained that the registration was not a repeat filing of the 2014 mark as the application was not for identical goods and services.

The Decision: Bad Faith under Article 59(1)(b) EUTMR

In the decision published 21 December 2023, the EUIPO's Cancellation Division cancelled the mark for all repeated goods and services.  The Cancellation Division restated the criteria for a finding of bad faith laid out in the CJEU's 2020 preliminary ruling in Sky v SkyKick, also relied upon by the proprietor, reiterating that "a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, within the meaning of those provisions, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark."

While repeat filings are not inherently prohibited, using them to evade consequences of non-use may indicate bad faith. Considering the timing and identical nature of some goods and services, the Cancellation Division found "the filing of the application of the contested EUTM, insofar as it includes the goods and services already covered by an earlier EUTM registration […] was made without any commercial logic and thus in bad faith."  The mark was cancelled for those 'repeat' goods and services, remaining valid only for 'new' goods and services, namely Class 9 (downloadable image files), Class 16 (work of art) and Class 41 (non-downloadable books).

Key Takeaways

• Repeat Filings and Bad Faith:

The ruling underscores that repeat filings may be deemed to have been made in bad faith if aimed at circumventing non-use consequences, revealing an intention contrary to acceptable commercial behaviour.

• Addressing Copyright Concerns:

The decision refuted FCB's claim that the filing aimed to circumvent limitations within copyright, particularly the requirement to disclose one's identity in order to enforce one's rights, emphasising that an EUTM proprietor's use of trade mark protection does not necessarily substitute copyright protection; just because the image is an artwork does not mean it cannot also function as a trade mark. The reasoning on copyright was more focused than that in the 2020 decision, which had questioned whether the work was deserving of or entitled to copyright protection given it was, for example, installed illegally on third party property.

In essence, this decision not only emphasises the potential consequences of strategic repeat filings but also clarifies the position that trade mark rights cannot be assumed to be supplementary to other intellectual property rights.

As for artistic protection for Banksy's works moving forwards, Pest Control seems to have taken a liking to design rights, having filed over 30 designs since 2019 for various works. Considering this decision is the sixth cancellation granted against Banksy's trade marks in recent years, the move to design rights is likely a wise one. Perhaps Banksy now thinks trade marks "are for losers" too?

With thanks to Binta Yade, trainee solicitor, co-author of this article.