An Australian interpretation of EUIPO's decision on bad faith 6 min read
After a two-year long dispute with Full Colour Black, a UK greeting card company, infamous anonymous street artist Banksy has lost his trade mark rights to his notorious Flower Thrower artwork in the EU.
Once sprawled across a garage wall on a highway in Bethlehem, this image is now no longer considered part of Banksy's vast IP portfolio; placing the remainder of his trade mark registrations for artworks at risk.
The EUIPO's decision reflects on bad faith registrations in the EU and offers other important food for thought in the context of trade mark and copyright law.
Key takeaway
There are different types of IP protection available to protect artistic works, but the choice of IP protection will strongly depend on the circumstances. Trade mark and copyright protection have very different provenances, functions and requirements, which need to be taken into account.
The decision
Background
After claiming that 'copyright is for losers', in 2014 Banksy sought trade mark protection for his artworks around the globe. The Flower Thrower artwork was registered in the EU as a trade mark for a range of goods and services, including sunglasses, building materials and Christmas tree decorations (this registration was used as an alternative to protection under EU copyright law, which would require Banksy to reveal his identity).
With the aim of using the Flower Thrower artwork on the front of their greeting cards, Full Colour Black (FCB) requested cancellation of the registration in March 2019 under Article 59(1)(b) of the European Union Trade Mark Regulation (EUTMR). In October 2019, Banksy opened a pop-up store in London selling Flower Thrower-branded merchandise in an attempt to demonstrate use of the mark in order to defend the cancellation action. The mark had not been used before this time so FCB argued the mark was filed in bad faith.
Decision – invalidation on the basis of bad faith
Article 59(1)(b) of EUTMR provides that an EU trade mark registration will be invalid where an applicant acts in bad faith when filing the application for the trade mark.
there may be a finding of bad faith when the conduct of the applicant 'departs from accepted principles of ethical behaviour or honest commercial and business practices'.
The EUIPO confirmed that a bad faith finding requires:
- some action by the EUTM proprietor which clearly reflects a dishonest intention; and
- an objective standard against which such action can be measured and subsequently qualified as constituting bad faith.
It added that there may be a finding of bad faith when the conduct of the applicant 'departs from accepted principles of ethical behaviour or honest commercial and business practices'. The EUIPO found that Banksy had filed the application:
- without any intention of using the mark;
- without the aim of engaging fairly in competition;
- with the intention of undermining the interests of third parties, in a manner inconsistent with honest practices; and
- with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark.
While bad faith should be shown at the date of filing, evidence before and after that date may also be relevant.
The EUIPO concluded that FCB successfully made out a case for bad faith and that Banksy was unable to show he had a legitimate reason for having filed the mark. The Office noted that use at his London pop-up store was insufficient to counter this conclusion, deeming it an attempt 'to commercialize goods … but only to circumvent the law'.
As a result, it declared the mark invalid under Article 59(1)(b). Costs (and cancellation fees) were ordered against Banksy.
How would this case be decided in Australia?
An Australian interpretation of these circumstances would likely render a similar result, even if pursued under a different type of trade mark action.
The Trade Mark Act 1995 (Cth) (TMA) allows for trade marks that are filed in bad faith to be attacked, either at the opposition stage or after registration, under s62A. The provision considers whether 'persons adopting proper standards would regard the decision to seek registration as being in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.' Banksy's registration is probably not susceptible to successful attack under s62A, given its fairly strict interpretation. We think that the removal provisions under the TMA would be the more appropriate approach.
An Australian interpretation of these circumstances would likely render a similar result, even if pursued under a different type of trade mark action.
Section 92(4) of the TMA allows for removal of marks for non-use where the owner:
- had no intention to use the trade mark and the owner has never used the mark in good faith in Australia; or
- has not used the trade mark in good faith for a continuous period of three years and at least five* years have passed since the trade mark was filed.
*since the EU registration – and Banksy's equivalent Australian registration - were filed before 24 February 2019.
In an Australian setting, Banksy would have needed to prove he applied for the mark with the intention of using it as a badge of origin and/or that he had used the mark in Australia, specifically, in trade or commerce. With Banksy unable to show use prior to when his pop-up store opened as a direct response to the pending dispute, the mark would likely be removed under either, or both, limbs of s92. This is because use under s92 requires use in a real commercial sense, as opposed to token use for the purpose of defeating a removal action.
In relation to intention to use the mark under the first limb of s92, we think Banksy would be found to lack the requisite intention to use the Flower Thrower artwork as a trade mark at the time that the application was filed. It seemed that in the EU, Banksy had filed the EU trade mark as a means of achieving some form of IP protection for his artwork where copyright protection was not available. Unlike the EU, Australian copyright law allows authors of creative works to remain anonymous or use a pseudonym (see ss34(1) and 129(2)) and own copyright in their work for 70 years from first publication. In Australia, Banksy would not have needed to look to trade mark law for protection. However, while artistic works by anonymous artists can be protected by copyright in Australia, there is some uncertainty surrounding protection for possibly illegal works which are displayed in public places for all to view and photograph (which is possibly a more relevant factor for Banksy!).
Food for thought
Although not contemplated in this decision, we think the fact scenario raises some questions that are likely to have increasing importance in the future, given the developing prevalence of street art throughout the world:
- Should artworks be able to be monopolised through trade mark registration?
- Is there a need for better protection for artists who want to remain anonymous?
- Should illegal graffiti and artwork in public places for all to view and photograph be protected by copyright?
The fine art of IP protection
- This decision is a reminder of the function and role of each type of IP protection. In Australia, it is a reminder that copyright remains the best protection for artists, whether anonymous or not, but that there are additional IP protections available, such as trade mark registration, as long as the artist can meet the relevant criteria for trade mark use.
- The case also emphasises the need for trade mark owners to 'use it or lose it'. For Banksy, this decision might bring his other unused marks into the limelight for bad faith filing.
- If you are an artist or in the arts industry and are unsure about how to maximise your IP protection, reach out to our Allens IP/PTA team for discussion and advice.