According to the EUIPO, Banksy’s “Flower Thrower” trademark is invalid since it was registered in bad faith
A very recent decision of the EUIPO Cancellation Division (no. 33 843 C) ascertained the invalidity of trademark no. 12575155, registered by the company Pest Control Office Ltd. (the company acting on behalf of the well-known street artist Banksy), because it had been filed in bad faith pursuant to article 59(1)(b) of the EU trademark Regulation no. 1001/2017. The proceedings, initiated by the company Full Colour Black Ltd., concerned the sign reproduced below, which portrays Banksy’s famous graffiti called “Flower Thrower” (the Court of Milan also issued a decision – commented upon here on this blog last year – on the same trademark, but did not grant the objection on the invalidity of the same due to bad faith, since the latter had not been duly proven).
According to Full Colour Black, the trademark application at issue was purely aimed at monopolising Banksy’s work of art for an indefinite duration, in total disregard of the copyright law which, unlike trademarks (that are renewable without time limits), grants rights for a limited time. More specifically, although the applicant had acknowledged that works of art can be registered as trademarks, it stated that a trademark application cannot be filed in order to circumvent the limits of copyright law.. This objective had clearly emerged from statements of Banksy himself, who had previously articulated his intention to register his work as a trademark with the express purpose of circumventing the requirements of copyright law, that would have undermined his anonymity in the context of possible litigation.
In support of the above, Full Colour Black had underlined that, amongst other things, Banksy had never marketed products bearing the above trademark until the initation of the proceedings on the invalidity of the same, when the artist had launched a “showroom” in which the public could watch his works and then buy them online. However, the same artist had then publicly admitted that the temporary shop was merely a mechanism to avoid losing his trademark in the context of the invalidity proceedings commented upon here.
Against these arguments, Pest Control had, on the one hand, questioned the relevance of the evidence relating to the bad faith on the ground that, whereas article 59(1)(b) of the Regulation provides that the proof of the existence of the bad faith must concern the time of the filing of the application for registration, the evidence provided by Full Colour Black was referring to long before or after the filing itself. On the other hand, it had been argued that the artist’s necessity to preserve his anonymity by seeking protection for his work in the context of trademark law, rather than copyright law, could not prove the existence of its bad faith, but rather proved its fully legitimate purposes.
By endorsing Full Colour Black’s observations, the EUIPO granted the application for the declaration of the trademark’s invalidity.
The European office firstly recalled that, despite the absence of a legal definition of “bad faith”, an EU trademark can be declared invalid pursuant to article 59(1)(b) when, for example, the applicant filed the application without any intention to use the trademark, or with the purpose of making an anti-competitive use of it, or with the aim of obtaining an exclusive right to the sign for purposes other than those falling within the distinctive functions of a trade mark.
The EUIPO then considered that, although the existence of the bad faith must be ascertained with reference to the time of the filing of the trademark application, even the applicant’s behaviour before or after that moment can be taken into consideration, if it is relevant for the purposes of proving the bad faith itself. Therefore, the evidence provided by Full Colour Black in support of the application for invalidity had to be taken into consideration, since they showed that the applicant was not trying to carve out a portion of the commercial market by selling goods bearing the above trademark. On the contrary, Banksy was only attempting to circumvent the limits of copyright law, as evidenced by his statements and those of his representatives. According to the EUIPO, therefore, Pest Limited and the street artist had the sole intention of obtaining an exclusive right to the sign for purposes other than the (distinctive) function to which a trademark should be so used. For these reasons, the EUIPO found the trademark was registered in bad faith and ascertained its invalidity.