Last year, the European Intellectual Property Office (EUIPO)'s Cancellation Division decided to invalidate a European Trade Mark (EUTM) registration for one of Banksy's most famous artworks –"Flower Thrower" (see here for our comment in the Trademark Lawyer on that case). The decision raised some interesting questions regarding bad faith trade mark applications and the protection of intellectual property rights in artistic works.
Earlier this month, we reported that the trade mark registration for another of Banksy's artworks ("Speak Now") had also been invalidated by the cancellation division of the EUIPO (see our blog here – EUIPO takes no monkey business as second Banksy mark is invalidated).
In recent weeks a further four decisions have been issued by the cancellation division, each invalidating another of Banksy's trade mark registrations for his artwork known as:
- "Bomb Hugger"
- "Love Rat"
- "Radar Rat"; and
- "Girl with Umbrella"
In each of these cases, the Cancellation Division decided that there was bad faith on the part of Banksy at the time of applying to register the EUTM under Article 59(1)(b) EUTMR. The applicant for a mark must be subjectively determined to have acted in a way which reflects a dishonest intention and judged against an objective bad faith standard. In this case, the Cancellation Division noted that Banksy had himself confirmed publicly that he did not produce any goods. He then went on to open his shop and online store, publicly stating that this was for the main purpose of trying to defend the invalidity applications against his trade marks. These actions amounted to sham efforts to try to show an intent to use the trade mark and were deemed bad faith on the part of Banksy at the time of filing. As a result, the EUTM registrations were declared invalid.
The Cancellation Division did acknowledge the challenges faced by Banksy in relation to asserting copyright against third parties while at the same time keeping his identity a secret, and noted that copyright and trade mark protection do not have to be mutually exclusive.
There is one further EUTM owned by Banksy which is under attack – this is a back-up EUTM registration for the "Flower Thrower" image (EUTM 18118853 which was filed in 2019, around the same time as Banksy's shop started trading). It remains to be seen if the same bad faith arguments can succeed in a situation where Banksy may be able to show that the "Flower Thrower" image has been used on products such as silk screen prints, which have (allegedly) been offered to the public for sale. The fact that all items on the website are currently "out of stock" and that there are question marks over whether the shop was ever open for trade, could work against Banksy.
For now, Banksy's trade mark registrations for the same artworks remain valid in the UK, but it may only be a matter of time before they too are attacked.
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