In October 2019, anonymous artist Banksy set up pop-up shop Gross Domestic Product in Croydon, south London in response to an invalidity action filed against a trade mark. “A greetings card company is contesting the trademark I hold to my art,” Banksy said in a statement. “And attempting to take custody of my name so they can sell their fake Banksy merchandise legally.”
The invalidity action was filed by card manufacturer Full Colour Black in March 2019, against an EU trade mark for one of Banksy’s most famous artworks known as ‘Rage, The Flower-Thrower’. The artist originally spray-painted the picture on a wall in Jerusalem in 2005.
The trade mark in question is owned by Banksy entity ‘Pest Control Office Limited’ and was registered in August 2014. This week, a European Union Intellectual Property Office (EUIPO) panel agreed to invalidate the registration, noting “[Banksy’s] intention was not to use the mark as a trademark to commercialise goods … but only to circumnavigate the law. These actions are inconsistent with honest practices.”
For an EU trade mark to be valid, the holder must sell goods using the image. Similar rules apply in Australia, with the baseline requirement for a non-use removal application being that the registration in question has not been used as a trade mark (that is, commercially and as an indicator of origin) in the preceding three years.
Whilst ordinarily copyright is the appropriate form of IP protection for artistic works, Banksy has been quoted as taking the view that copyright is not appropriate for him, particularly since it would require him to identify himself. For now, he has chosen to remain anonymous and it appears this has worked in Full Colour Black’s favour.
The ruling could mean other Banksy trade marks (particularly in the EU) are now at risk. Full Colour Black has challenged the trade marks of a further six Banksy works, including Laugh Now (Los Angeles, 2002) Umbrella Girl (New Orleans. 2008), and Bomb Hugger (London’s East End, 2003).
This case serves as a warning to trade mark owners to ‘use it or lose it’ when it comes to trade mark registrations.