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No flowers, no tears

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03 February 2021

The Covid-19 pandemic crisis is not a war but it requires mobilisation of resources at unprecedented levels, flexibility and perseverance of all. Social and medical workers merit flowers indeed but the mysterious British street artist Banksy, an enigmatic social activist and philanthropist, isn't receiving much thanks for his constant efforts in denouncing social inequality and injustice.

Banksy saw his European Union trademark registration No. 12575155 for one of the most iconic graffiti works invalidated by decision of the EUIPO’s Cancellation Division after a two years' legal battle started by a British greeting cards company that used Banksy's artwork for commercial purposes.

The trademark corresponds to Banksy's ‘Rage, Flower Thrower’, featuring the posture of a man and suggesting a violent intent but by substituting a Molotov cocktail or a rock with a bouquet of flowers, the artist advocates peace rather than violence.

Early 2019, the British greeting cards company applied for a declaration of invalidity of the trademark claiming it was filed in bad faith and on September 14th 2020 the Cancellation Division of the EUIPO rendered a decision in favour of the invalidation applicant. The mere fact that the trademark of the social activist is invalidated on an alleged bad faith lacks nuance, raises concerns and requires some explanations.

According to the invalidation applicant, the purpose of the trademark registration was not to use the sign as a trademark but to circumvent the proprietor's inability to rely upon copyright law without prejudicing his public persona (graffiti is vandalism...) and was therefore in bad faith. In return, the proprietor argued that bad faith can only be established if there exist objective, relevant and consistent indicia showing that, at the time of filing the application, the proprietor's intentions were inconsistent with the honest practices of the trade. The proprietor cannot be presumed to have filed the application in bad faith on the mere basis that at the time of filing it did not deploy any relevant economic activity.

Banksy’s bold statements, however, that 'copyright is for losers' and that the public is morally and legally free to reproduce, amend and otherwise use any copyright works forced upon them, did not endear Banksy to government agencies and institutions. Banksy had not manufactured, sold nor provided any goods or services under the contested sign nor sought to create a commercial market for his goods until after the filing of the present application for a declaration of invalidity. In October of 2019, when he opened an online store and had a physical shop that was not even open to the public, he was not by his own words trying to acquire a portion of the market selling goods with his artwork but merely seeking to circumvent the law. As a matter of fact, if within a period of five years following registration the proprietor has not put the trade mark to genuine use in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions including revocation as a whole or in part, unless there are proper reasons for non-use.

Banksy’s unfortunate bold statements made the Cancellation Division believe that the contested trademark registration was applied for in bad faith, i.e. because Banksy would not have had any intention to use the trademark in relation to the goods and services covered by the registration but rather to obtain an exclusive right for purposes other than those falling within the functions of a trademark.

The Cancellation Division thus ruled against the social activist and in favour of the greeting cards company that used his artwork, not endorsing the greeting card company's conduct (let's hope) but appreciating the bold statements and criticisms of this social activist even less.

Although we believe that Banksy’s bold statements and criticisms left the EUIPO’s Cancellation Division no choice in affirming its bad faith and invalidating its trademark registration, some considerations merit further thought.

First of all, while it would certainly have been appropriate to determine that the contested trademark registration did not comply with the use requirement and should therefore have been revoked on the basis that the Banksy’s use thereof merely consisted of token use for the sole purpose of preserving the rights conferred by the trademark registration, the decision of the Cancellation Division essentially also admits that, in circumstances as referred to in this specific case, token use could also amount to bad faith leading to the invalidation of the trademark registration. This decision certainly fits in the series of fairly recent decisions of the EU Court of Justice confirming that existing trademark registrations can even be declared invalid on the basis of non-use in the first five years following the registration date (i.e. the period of time during which use of the mark should normally not be evidenced) if it is clear from the proprietor’s behaviour that it wished to circumvent the law in applying for the mark.

For the greeting cards company, this decision made a huge difference since a decision to revoke a trademark registration for reasons of non-use would only have had a limited retroactive effect (i.e. as from the date of the application for revocation) whereas the current decision invalidating the trademark registration means that the trademark was invalid as from the outset (i.e. as from the date of the application for registration) and that Banksy thus cannot claim any infringement thereof vis-à-vis them.

Another consideration relates to the Cancellation Division’s statement that Banksy’s (alleged) copyright in the artwork and its right to freedom of expression as contained in its artwork and its numerous criticisms to the system of intellectual property rights do not prevent the application of bad faith as a ground for cancelling its trademark registration. However, while applying this rule, the Cancellation Division also refers to the EU rules on trademarks as being essentially aimed at contributing to the system of undistorted competition in the European Union, allowing undertakings to attract and retain customers by registering trademarks enabling those customers, without any possibility of confusion, to distinguish those goods or services from others which have a different origin. It can be questioned how a consumer would not be confused about the origin of a product bearing the artwork in question if the product does not originate from Banksy or was not authorized by Banksy. However, as rightly assessed by the Cancellation Division, the fact that one (allegedly) owns the copyright to an artwork does not necessarily mean that the same person does not need to have an aim of engaging fairly in competition when filing a trademark application and that he is therefore not subject to the grounds of bad faith.

As a final consideration, we also question whether Banksy would have been successful at all claiming infringement of its registered trademark. As a matter of fact, trademark law requires that a sign is used in the course of trade and as an indicator of origin of goods or services in order for trademark infringement to occur. In the case at hand, the use of Banksy’s artwork on greeting cards cannot reasonably be qualified as use of the artwork as an indicator of origin of the greeting cards but rather as a decorative element which the relevant public will only perceive as having an exclusively ornamental function. Therefore, even if Banksy’s trademark registration would have been upheld by the Cancellation Division, one could argue that Banksy could still only invoke its copyright (which he is unable, or at least unwilling, to do).

In the light of the new EUTM Regulation that applies since October 1, 2017 and the articles dealing with absolute grounds for refusal, any new application to register its artwork for greeting cards, posters, clothing, bags and other merchandising articles may even be refused registration on the basis that this artwork gives substantial value to the said goods. Especially in view of these new rules, and the troubles Banksy had (and still has) in enforcing intellectual property rights against third parties, the only way to claim some protection for artworks without giving up its anonymity (at least in the EU) would be to apply for Community design registration of its artworks, thereby taking into account the novelty requirement and that the protection offered by such a design registration will in any case lapse after 25 years. It appears that Banksy only adopted this strategy shortly before obtaining the EUIPO Cancellation Division’s decision.

Alas, no flowers for Banksy.

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