Banksy – genuine use of a trade mark?
In October, the well-known street artist known as Banksy opened a pop-up shop in Croydon in an attempt to strengthen his position in an ongoing trade mark battle with a greetings card company.
The store would stock Banksy merchandise and memorabilia, although the goods were merely displayed and were not offered for sale, with all sales being made online. The shop was also only open for a total of two weeks, before closing completely, and the goods were each limited in quantity or “one offs”.
Section 46 Trade Marks Act 1994 (“TMA”) states that a registered trade mark may be revoked “if it has not been put to genuine use” within five years following the date of registration.
The question is therefore whether Banksy’s use of the trade mark in relation to the sales made via the Croydon and online stores can be said to be “genuine” for the purposes of the TMA?
The dispute began in March 2019 when Full Colour Black, the card company, initiated proceedings aimed at invalidating an EU trade mark (based on Banksy’s Flower Thrower street art) that had been registered in August 2014 by Pest Control Office Limited, the company that authenticates Banksy’s art. Banksy claimed Full Colour Black were selling copies of his artwork without his permission and “attempting to take custody of [his] name so they can sell their fake Banksy merchandise legally”.
Full Colour Black, however, claim that Banksy should have protected his work through copyright, rather than registering trade marks, as trade marks should only be used to protect logos that inform consumers about the origin of the goods they are purchasing.
Banksy may be reluctant to pursue an arguably strong case in copyright because Pest Control Office Limited, as the public face of Banksy, would need to prove it acquired the copyright from Banksy, which may then require Banksy to reveal his true identity. The absence of mystique and anonymity would then be likely have a negative impact on the value of Banksy’s artwork and personal brand going forward.
Full Colour Black also maintain that the Flower Thrower artwork is incapable of being perceived as a trade mark by consumers as the artwork has been reproduced by others to such an extent that it has become commonplace, and does not allow consumers to use it as the basis for identifying the origin of goods. The company cite the fact that Banksy previously offered free, high-resolution copies of his works via his website for download, often encouraging reproductions and declaring “copyright is for losers.” Indeed, even the web store itself encourages “the copying, borrowing and uncredited use of his imagery for amusement, activism and education purposes”, and the creation of merchandise for “personal entertainment and non-profit activism for good causes”.
Has Banksy put his mark to genuine use?
When the store opened, Banksy stressed that “I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law”. In the case of Ansul B.V. v Ajax Brandbeveiliging B.V , the ECJ held that “genuine use” means actual use of the mark, and not merely token use serving solely to preserve the right conferred by the mark (which Banksy’s statement above seems to suggest). Such use must instead be consistent with the essential function of a trade mark – to guarantee the origin of a product.
Combine that with the fact that the Croydon pop-up shop was prohibited from selling any of the goods on display, and was only open a total of two weeks, it could be argued to show that this was merely token use by Banksy in an attempt to preserve his trade mark.
However, there is no “de minimis” rule in terms of a minimum number of sales to be made under a trade mark in order for such use to be found to be genuine. The fact that the store was only open for two weeks and that each product was limited in number is therefore only one factor to consider.
We await the decision of the EU Intellectual Property Office on the validity of the trade mark, but this dispute highlights that questions surrounding the validity of registered trade marks continue long after registration, and demonstrates the need for businesses and individuals to consider a range of legal and commercial factors when deciding how best to protect and maintain their intellectual property rights.
An option previously open to Banksy might have been to simply re-file the trade marks, which would then restart the five year period in which the mark cannot be challenged for non-use (known as “evergreening”). However, a recent EU decision suggests that it is likely that such a practice would now be seen as being in bad faith, and so resulting in the new application also being challengeable.
Ultimately however, the dispute has provided significant publicity for both the artist and the challenger, and in the light of previous publicity stunts arranged by Banksy which have allowed his profile to build globally, this may even have been his aim all along.