This week Banksy lost his legal battle with Full Colour Black printing over the trademark of his famous artwork, the ‘Flower Thrower.’
Full Colour Black, represented by Blaser Mills Law Trade Mark Attorney, Aaron Wood, had built a business selling postcards of various graffiti based street art work, using photos they had taken themselves. Last year Banksy accused Full Colour Black of trying to “take custody” of his name to sell “fake merchandise of his work”.
In March 2019, Full Colour Black started an invalidity action aimed at cancelling an EU trademark for Banksy’s Flower Thrower artwork, which had been formally registered in August 2014 by Pest Control Ltd, a company acting on behalf of the artist.
On Monday 14 September 2020, the European Union Intellectual Property Office ruled that Banksy’s trademark would be invalidated for being filled in bad faith as “it was clear Banksy did not have any intention to use the EUTM in relation to the contested goods and services at the time of filing of the EUTM”, despite his attempt to show his use of the trademark by opening a pop up shop called ‘Gross Domestic Product’. The panel stated that Banksy’s audacious move to launch a shop in response to the dispute actually “undermined” the case as his actions were “inconsistent with honest practice.”
The Cancellation Division also made clear that Banksy’s anonymity was detrimental to his case as “he cannot be identified as the unquestionable owner of such works as his identity is hidden”. In addition, Banksy’s previous comments about his aversion to IP rights, famously stating “copyright is for losers”, also worked against him. In closing comments, the panel stated that Banksy “has [chosen] to be very vocal regarding his disdain for intellectual property rights”, but that opinion “does not annul any validly acquired rights to copyright or trademarks”.
Aaron Wood, Trade Mark Attorney at Blaser Mills Law, commented: “Monday’s ruling is a significant decision for artworks, as the EUIPO Cancellation Division has clearly taken the position that such works, are figurative marks like any other, but that means they also need to be used as trademarks”.
“The fact that Banksy (and his lawyer) came out in the press to say the pop-up shop was intended to allow him to create items to fulfil the need to prove trademark use shot him in the foot. It underlines that you need to be very careful about what you say to the press – without the statement, it would have been mere conjecture that he would never use the mark and had no intent to; having him admit it was the final nail in the coffin.”
“The decision could be damaging for more of Banksy’s trademarks as he owns a US registration for the ‘flower bomber’, which was filed based on the EUTM, meaning that no proof of use was required, he simply had to show an indication of intention to use. If there was no intention to use then the mark is invalid, and there is also the question of fraud. In fact, all of Banksy’s trademarks are at risk as all of the portfolio has the same issue. The only difference potentially is his design portfolio and his word mark for BANKSY.”
For further information on the case, please contact Aaron Wood on 01494478676 or at [email protected]
The case has also been widely covered by the national press, see below for links.
Contributing Advisors
Colin SmithPartner, Blaser Mills Law
Myles CulmerDirector, BDO Advisory Services
Myles CulmerDirector, BDO Advisory Services
