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Until September, the so-called “Flower Thrower” — a work by the British artist operating under the pseudonym “Banksy” — not only formed part of the urban art of Belén (West Bank) but also enjoyed trademark protection in the European Union. As a result of a dispute before the European Union’s Intellectual Property Office in 2019, its Cancellation Division issued a resolution declaring the registration invalid on bad faith grounds.

Background and arguments of the parties

Pest Control Office Limited, an entity created to preserve Banksy’s anonymity, has applied for different EU trademarks whose graphical representation matches the artist’s works, including the disputed trademark (the “Trademark”), since 2014.

In 2019, Full Colour Black, a company that markets greetings cards incorporating graffiti (including Banksy works), requested that the Trademark be declared invalid based on bad faith upon applying for its registration (Article 59.1.b of the EUTMR).

In the framework of the invalidity proceedings, the arguments revolved around the following:

  • Full Colour Black. Among other points, it claimed that the “Flower Thrower” is one of Banksy’s most iconic works and has been extensively reproduced by the public; it also highlighted Banksy’s position on the protection granted by intellectual property rights and trademark law, quoting him as saying “copyright is for losers.”

It added that the artist only started to use the Trademark for the products subject to protection sold through his online store and an establishment (where the public could only look through a store window) after the proceedings started.

It took the Court of Justice of the European Union case law as a basis, particularly the Sky case (analyzed in this blog post). It sought to demonstrate that obtaining the registration of a sign to then not use it as a brand, and to obtain “collateral benefits” to the detriment of third parties, constitutes an abuse of the system and an act of bad faith.

  • Pest Control Limited/Banksy. It based its arguments on the insufficient evidence provided by the counterparty and insisted that Banksy had not given free rein to use his works for commercial purposes. It took the NEUSCHWANSTEIN (EU:C:2018:673) case as a basis to claim that “even in a situation where (…) files an application for registration of a sign with the sole aim of competing unfairly with a competitor who is using a similar sign, it cannot be excluded that the applicant’s registration of the sign may be in pursuit of a legitimate objective,” and so there is no bad faith in registering it.

It also raised the freedom of expression set out in the European Charter of Fundamental Rights to argue that Banksy’s actions or position in the media did not prevent him from using the protection that intellectual and industrial property rights grant their holders.

The registration: bad faith registration

The Cancellation Division took as a starting point the fact that the concept of “bad faith” has no legal definition, although its existence requires motivation on the part of the trademark applicant reflecting a dishonest intention, and that the objective facts — analyzed as a whole — prove that that motivation diverges from “accepted” conduct or faithful practices (LINDT case (EU:C2009:361).

The Cancellation Division conducted a fairly detailed conceptual analysis (see pages 9 to 16 of the resolution):

  • Although it did not assess the existence of copyrights on the “Flower Thrower,” the artist’s anonymity and the fact that the work consists of graffiti painted on the wall of a building could raise doubts as to whether he holds copyrights. Therefore, to protect his work, Banksy (through his representative) resorted to trademark protection.
  • In no case could the artist’s statements encouraging third parties to use and reproduce his works, and against intellectual property rights and the related regulations, prevent him from accessing the protection that the regulations (in this case, trademark regulations) grant holders.
  • Banksy and his representatives, through their statements in the British press, admitted that the use of the trademark subsequent to the registration sought to avoid the fact that the sign had expired due to “lack of use” as envisaged in the European regulations. The trademark holder had no intention to use the registered sign as a brand, marketing it or selling products including it, until after the start of the invalidity proceedings.

Taking this into account, the Cancellation Division considered that the sign was applied contrary to good practices, as its holder sought to prevent third parties exploiting it instead of intending to use it as a brand, and, particularly, to distinguish the business origin of products and services. Therefore, in its opinion, this trademark use could not be considered a legitimate use, noting bad faith. Consequently, the Cancellation Division fully upheld the requesting party’s invalidity petition.

The artist currently has other works registered as trademarks that could face the same fate, and the Cancellation Division’s resolution can be appealed, so we are likely to have news from the different processes and European bodies soon.

Authors: Nora Oyarzabal y Raúl Pérez

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