Earlier in 2020 ACID Legal Affiliate Gavin Llewellyn of Stone King was interviewed by Greetings Today magazine regarding an ongoing case between the artist Banksy and Full Colour Black Ltd. you can read the article in Issue 67 of the ACID Newsletter here
It has now been reported across the National Press that Banksy’s trade mark for the artwork Flower Thrower has been overturned. Gavin reports below.
Say it with Flowers
Banksy, the Bristolian graffiti artist, has registered numerous trade marks comprising his art works. One of his most famous works, the so-called “Flower Thrower”, was the subject of trade mark cancellation proceedings before the EU Intellectual Property Office (“EUIPO”), which Banksy lost.
Since Banksy wishes to remain anonymous, he decided to register his trade marks through a company. His strategy was that by owning registered trade marks through a holding company, he could stop other people from using his works without having to rely on copyright law.
Copyright subsists in original artistic works and is an automatic right which lasts for 70 years beyond the death of the artist. It will usually, therefore, be the natural choice for someone wishing to prevent other people from copying their original artworks and most certainly will protect Banksy’s artworks. However, if Banksy were to enforce his copyright, he would be required to reveal his identity to prove his authorship of his artworks. Banksy therefore took the decision to protect his works as trade marks.
Anyone can register a trade mark, providing it is capable of distinguishing their goods or services from those of other traders, they have a good faith intention to use it within the next five years in relation to the registered goods and services and it is not successfully opposed by another party with earlier rights.
Banksy’s artworks might well be capable of acting as trade marks and are therefore potentially registrable as trade marks so as to distinguish the origin of goods or services, for example, as a clothing label. The key question in trade mark law is whether Banksy’s art is capable of indicating the origin of the goods and services for which they are registered. The main problem for Banksy in this case, however, was that he could not demonstrate that he had made genuine use of the Flower Thrower trade mark in respect of the goods for which it had been registered or that he had had any intention of making genuine use of it at the time he filed the trade mark application.
An application was made by Full Colour Black Limited, a company which sells cards depicting graffiti, to cancel the trade mark. Since the EUIPO was not persuaded that there had been any genuine use of or intention to use the mark, it cancelled the registration. A shop front and on-line store set up by the artist in Croydon, South London, in 2019 featuring some of his artworks, including prints featuring the Flower Thrower work, did not convince the EUIPO that he was making genuine use of the trade mark. The EUIPO commented that the shops were set up merely to attempt to maintain the registration in response to the cancellation action, not to maintain genuine use of the trade mark. It was also doubtful that Banksy was using the trade mark as a trade mark. One of the products listed for sale depicted the Flower Thrower across three frames. This was not use of the mark as a badge of origin of the goods but decorative use.
Banksy’s other registered trade marks are now under threat. Trade marks are a key asset for any business wishing to protect its brand identity, but careful thought should be given to whether any trade mark applied for will be used in order to identify the source of the goods and services for which it is protected. There is no harm in future-proofing a trade mark at the application stage, provided that there is a genuine intention to start using the mark within a five-year period. Trading names, product and range names are all potentially suitable for registration as trade marks, but marks which are registered for the sole purpose of trying to ward off competitors when there is no real intention to use the mark should be avoided.
© 2020 Stone King LLP