Monday 14 October 2019

'Trade mark dispute' 2019 Banksy

Last week, the mysterious artist Banksy ’opened’ a homewares store Gross Domestic Product in Croydon, South London. The temporary installation displays a range of ’impractical and offensive’ merchandise, including a skinned FrostiesTM Tony the TigerTM rug, a glitter ball police riot helmet and a ’welcome’ mat stitched from lifejackets. Some of these items are available to purchase from a website connected to the store.

Passers-by will be forgiven for assuming this is Banksy’s latest satirical commentary on modern day social and political issues like animal poaching, the surveillance state and the European migrant crisis. However, Banksy has admitted his motivation behind opening the store is 'possibly the least poetic reason to ever make some art’—a trade mark dispute. In a statement taped to the wall of the store, Banksy alleges that a greeting card company is trying to ’seize legal custody of the name Banksy’.

The allegation appears to relate to an application filed by a UK greeting card manufacturer, Full Colour Black (FCB), to cancel Banksy’s European Union trade mark registration for the ’flower bomber‘. This famous Banksy artwork depicts a protester launching a Molotov cocktail of flowers. The image was registered as a European Union trade mark in 2014. According to FCB’s attorney, the proceedings challenge the validity of the registration on the basis that Banksy never intended to use the image as a trade mark.

There are two main methods of cancelling a European Union trade mark registration.

  1. Firstly, a trade mark registration can be cancelled if it has not been used for an uninterrupted period of five years or more.
  2. Secondly, a trade mark registration can be declared invalid on the basis that the trade mark should never have been registered in the first place. There are various reasons why a trade mark registration might be declared invalid, including:
  • The trade mark is generic, descriptive or “non-distinctive”.

  • Another party can claim earlier rights in an identical or similar trade mark.

  • The trade mark was applied for in “bad faith”.

New Zealand trade mark registrations can be cancelled or invalidated on the same grounds. However, the ’non-use’ period in New Zealand is three years, as opposed to five years.

FCB’s attorney has spoken to several media outlets and denies the claim that these proceedings relate to Banksy’s name. Rather, FCB’s argument is that Banksy has registered the ’flower bomber‘ artwork (and other artworks) as a trade mark to circumvent copyright laws that offer a limited term of protection. The term of protection under copyright law differs between countries. In New Zealand, copyright protection for an artistic work will last for 50 years from the artist’s death. In Europe, the term is 70 years from the artist’s death. However, the protection offered by a trade mark registration is potentially limitless. Trade mark registrations can be renewed every 10 years indefinitely.

FCB also argues that Banksy only sought to register his artworks as trade marks to avoid the evidential requirements in a copyright case. Banksy would be forced to disclose his identity as the author and owner of copyright in those artworks, which, as an anonymous artist, he/she would not want to do.

From a legal perspective, Banksy’s decision to open a store as a means of defending the proceedings is not entirely clear. Some attorneys have speculated whether Banksy opened the store to defend a claim of non-use. Evidence of ’genuine’ use can defeat a non-use claim. However, generally speaking, that use must have occurred before the application for cancellation. FCB’s attorney has admitted (quite rightly) that the opening of Gross Domestic Product would not stand up as evidence because the use has occurred seven months after the proceedings were filed.

FCB’s claims seem to imply that FCB is pursuing a ’bad faith‘ argument in this case. However, it is difficult to know exactly on what grounds FCB is challenging Banksy’s registration because the documents that have been filed in the proceedings cannot be viewed publicly until the EU trade marks office issues its decision.

Regardless, the case is highly unusual in that it does not appear to adhere to the traditional arguments and evidence we would expect to see in these sorts of proceedings. Of course, from a subversive creative like Banksy, we wouldn’t expect anything else.