Banksy Loses Trademark Battle Over Bad Faith Finding

Introduction

Banksy’s past statements and actions have come back to haunt him, as on 18th May 2021, he lost another trademark in the high-profile IP dispute between him and Full Color Black Limited. EUIPO Cancellation Division, in its judgement, held that Banksy’s trademark is “declared invalid in its entirety” and his representatives will “bear the costs” of the case.

Banksy and his history with IP rights

Banksy is an anonymous British artist and creator whose real name and true identity are yet to be ascertained. Banksy’s art, mainly graffiti, combine satire and dark humour in a quirky design. His art revolving around political and social commentary has been seen on various urban landscapes throughout the world, including streets, walls and bridges.

Banksy has not been shy in expressing his dislike for the Intellectual Property regime, making statements like ‘copyright is for losers’ in his 2007 book Wall and Piece. However, of late, Banksy’s despise for the IP system seems to have faded as he has been involved in multiple intellectual property disputes, mostly on trademark issues where the discourse revolves around his artwork.

In late 2018, Pest Control, Banksy’s representatives who authenticate his art, filed a lawsuit against an Italian enterprise that orchestrated an exhibition – “The art of Banksy, a visual protest” – for Milan’s Mudec Museum. The event started in November 2018 and continued till April 2019. Banksy won that case, and the museum was ordered to stop retailing merchandise that had replicated his branded art.

UK-based greeting card company Full Colour Black Limited has taken issues with its trademark registrations, alleging that they were filed in bad faith and did not have a genuine use. In 2019, Banksy went as far as to opening a pop-up shop in London for his merchandise solely for trademark dispute, saying, “A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally.” On 16th September 2019, the EUIPO’s Cancel division invalidated its entirety, the ‘flower thrower’ trademark registered by Pest Control, Banksy’s representatives who authenticate his art.

Brief Facts

This case follows a long-running legal dispute between Full Colour Black Limited and Banksy’s representatives Pest Control over trademark registration of Banksy’s artwork. FCB filed an invalidity application alleging that these trademarks are filed in bad faith as there is no genuine use for them. In the present case, the artwork in question is referred to as ‘Laugh Now’, which comprises the image of 10 monkeys standing side by side and all bearing a sign. Four of the characters are empty in the depiction of the contested EUTM, while the other six signs contain the words “Laugh now, but one day we’ll be in charge“.

The contested EUTM contains only one depiction of the monkey, and the mark does not contain any words. The issue relates to the registration of graffiti artwork painted in public space. The painting was open to being photographed by anyone and has been disseminated widely. Banksy permitted the general public to share his work while providing high-resolution versions of it on his website. FCB accused Banksy of registering the EUTM only to circumvent his inability to rely upon other appropriate intellectual property rights like copyright due to his anonymous persona.

The concept of Bad Faith registration

Article 59(1)(b) of the European Trademark Regulations, 2017 provides that “An EU trade mark shall be declared invalid on application to the Office or based on a counterclaim in infringement proceedings where the applicant was acting in bad faith when he applied for the trademark.” While the term “bad faith” hasn’t been legally defined, it is open to interpretation, and attempts have been made to determine its key ingredients.

It is a widely considered position that bad faith is present when it seems that the trademark holder filed its application for registration without any intention of using the contested EUTM or without the aim of engaging fairly in competition, but to undermine the interests of third parties, in a manner inconsistent with honest practices, or to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trademark, in particular the essential part of indicating origin. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trademark. As a rule of thumb, intentions on their own are not subject to legal consequences.

For a finding of bad faith, there must be:

  • Some action by the EUTM proprietor which reflects a dishonest intention and,
  • An objective standard against which such action can be measured and subsequently qualified constitutes bad faith.

There is bad faith when the applicant’s conduct for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards.
Whether a EUTM proprietor acted in bad faith when filing a trademark application must be the subject of an overall assessment, considering all the factors relevant to the particular case. To determine whether the applicant made the application in bad faith, the applicant’s intention while completing the application and the purpose as a whole should be kept in mind. The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Issues and Findings of the Case

The EUIPO, in its ruling, differentiated between trademark and copyright, stating that the very purpose of a trademark is to allow consumers to identify the commercial origin of the goods/services at issue and distinguish these goods/services from those of other companies while the purpose of copyright is to protect different kinds of artistic works. Therefore, a painting or street art fits for copyright protection on fulfilling the essential requisites.

Furthermore, the Court considered Banksy’s anonymity and how it prevents him from seeking copyright law protection for his artwork. To get protection for his works, he needs to come out of his secret persona and reveal his true identity. Furthermore, copyrights are exhaustive as they have a fixed duration of protection in the EU, i.e., lifetime of the creator plus an additional 70 years from their death making these rights are exhaustive. However, an applicant can renew his trademark every ten years.

An exception to this indefinite rule is where the brand owner does not genuinely use the mark for the goods and services for which it is had sought registration. Therefore, we see that trademark can extend the duration of protection of the work and hence can circumvent any such limitation that copyright has. Also, to be taken into consideration is that according to European law, an applicant can challenge the validity of a trademark only through filing an invalidity application. Therefore, there is no automatic ceasing of protection when not used. Finally, the EUIPO noted that both Trademark and Copyright do not have to be mutually exclusive, and both of them have different remedies.

On proprietor’s argument that Article 20 of the Charter of Fundamental Rights of the EU provides everyone equality before the law and according to Article 11.1, everyone has the right to freedom of expression, the court held that personal rights and liberties could be curtailed when other laws are infringed or broken, the rule in question being Article 59(1)(b) EUTMR (European Union Trademark Regulations, 2017) which is violated when the trademark is filed in bad faith.

The shreds of evidence were insufficient to prove that Banksy was ‘producing, selling or providing any goods or services under the contested sign either before the date of filing of the contested EUTM or up to the date of filing of the application; for a declaration of invalidity.’ Moreover, extracts from his webpage from the year 2010 and 2011 showed him inviting the visitors to download his work for ‘personal amusement’ and that he is not profiting from the sale of mugs, t-shirts or greeting cards bearing his artwork.

In 2019, Banksy opened a Pop-up shop in the UK called ‘Gross Domestic Product.’ The windows displayed his works, including paintings such as the ‘Laugh Now’ and ‘Flower Thrower’. The shop’s website on 28/10/2019 encouraged the copying, borrowing and use of Banksy imagery without crediting him for ‘amusement, activism and education purposes and to make merchandise for personal entertainment and non-profit activism for good causes, but not for passing them off as authentic and re-selling them.’ The trademark was filed on 07/11/2018, and it was evident that Banksy did not sell any goods or provide any services under the mark until October 2019. He had only started to sell goods in late 2019, one month before the invalidity application filing. He stated explicitly that the goods were only being sold to overcome the non-use criteria for trademark proceedings and not commercialise the goods.

Even though Banksy has outrightly showed his dislike for IP rights, the law and the restrictions are the same for everyone. There are restrictions to the right to register a trade mark and that would be in the case where the mark is filed in bad faith. Article 59(1)(b) EUTMR meets the general interest objective of preventing trade mark registrations that are abusive or contrary to honest commercial and business practices. These registrations are contrary to the principle that cannot extend the EU law to cover abusive practices on the part of a trader, which does not make it possible to attain the objective of the legislation in question.”

The Neuschwanstein judgement states that “a party that registers a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not acting in bad faith.” However, this reasoning didn’t apply to the present case because Banksy was neither using the sign as a trademark nor having a legitimate objective.

In the Sky judgement, it was held that ‘the proprietor’s intention to use the mark as a trademark is evidenced through the filing of the application’ and that the onus of proving bad faith lies on the applicant filing the invalidity application. Full Black Company showed Banksy’s intentions from 2007 till the time of applying the mark and even after that. While citing the Monopoly judgement held that the burden of proof lay upon Banksy and his representatives to prove that they had genuine reasons to apply for the mark. The Court held that Banksy’s actions were held to be inconsistent with honest practices. Their only target was to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trademark.

Conclusion

EUIPO’s decision seems to be well reasoned, fair and in good conscience. Banksy aimed to abuse the intellectual property protection laws and unfairly cling on to a trademark for which he had no genuine use. Banksy couldn’t have his cake and eat it too. He was not willing to compromise with his anonymity but also wanted protection for his work. One cannot enjoy both two desirables but mutually exclusive alternatives. If a person wishes to own, keep and impose registered trademarks, they are required to act in good faith, start using them seriously and genuinely utilise them.

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