The case of Banksy’s Flower Thrower

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Theoretical protection under copyright law

Banksy’s strategy to rely on trademark law to protect its ever-growing artworks portfolio can seem startling at first glance since most authors seek protection of their works through copyright law.

This is so because copyright protection is granted automatically as from the moment the artwork takes form, with no further formalities and lasts for up to 70 years after the death of the original author. The threshold for copyright protection would have been “easily” met in the present case, as Banksy’s flower thrower (i) could be considered original, in the sense that it is the author’s own intellectual creation, and (ii) has been fixed into a specific and concrete artistic form (mere ideas, no matter how original or novel, are not protected).

Banksy has always been very vocal about making his art accessible to everyone. He encouraged the public to use and reproduce his artworks endlessly, yet drawing the line where his art would serve commercial purposes. By relying on copyright law, Banksy could – at least to a certain extent – have barred those who, such as Full Colour Black, had decided to cross that line. This is so because during the entire period of protection, the author has the exclusive right to control any and all acts of reproduction or exploitation of his work, for example for commercial purposes.

However, it seems that the EUIPO has currently closed the door to copyright protection for those artists who, just like Banksy, wish to enjoy protection while remaining anonymous. Copyright protection cannot as of yet be granted when the person who comes forward as the author cannot be clearly and legally identified as such. The EUIPO also raised an additional – and much more controversial – point in its September decision, when it questioned whether copyright protection should actually extend to those creating art on the property of owners who have not given their express permission to it.

Rather than further elaborating on these two points, the EUIPO turned instead to the assessment of bad faith as an absolute ground for invalidation of Banksy’s flower thrower trademark registration.

No protection under trademark law

Unlike protection under copyright law, protection under trademark law is not granted automatically. In order to receive protection, a trademark application must be filed with the relevant administrative body, which requires a thorough analysis by an expert. Protection under trademark law can theoretically be granted to all sorts of signs such as letters, colours, shapes or even drawings, as for Banksy’s flower thrower, as long as the sign can be graphically represented. In addition to that requirement of graphic representation, the expert would have to check the substantive conditions to be granted protection under trademark law, namely the distinctiveness, legality and availability of the sign.

The sign must firstly have a distinctive character, in the sense that it enables the consumers to identify the origin of goods or services on the market and distinguish them from those provided by other market players. The sign must also be legal in the sense that it must be authorised as a trademark. Some signs will never qualify for protection under trademark law, for example because they are detrimental to public order and accepted principles of morality. On top of that, the sign must be available, meaning that it must not already have been registered as a trademark. This can be ensured by conducting a search through specialised trademarks databases to check whether similar/identical trademarks exist for similar/identical goods and/or services.

Once registered, protection is initially granted for a duration of 10 years but can be extended for subsequent periods for an – in theory – unlimited duration. This stands is stark contrast with the limited copyright protection, which will in any case expire 70 years after the death of the original author. Besides his wish for anonymity, this unlimited protection might be one of the reasons why Banksy turned to trademark instead of copyright law.

During this entire period, the owner is thus granted an exclusive right to use or control the use of their trademark in the course of trade, i.e. to commercialise or control the commercialisation of their goods and services.

Registration of the trademark however does not prevent it from being declared invalid, notably by invoking absolute grounds for invalidity. Since these grounds aim at protecting the general interest, the application for invalidity can be brought at any time and by any person, without the need to prove an interest in bringing the proceedings. Full Colour Black sought invalidation of Banksy’s trademark on the ground of a lack of distinctiveness of the sign and the artist’s bad faith, with the EUIPO exclusively shifting its focus on the examination of Banksy’s bad faith at the time of filing his trademark application.

As the EUIPO observed, there is no legal definition of the term “bad faith”, which must then be assessed at the hand of other factors, notably the applicant’s intention at the date of filing of the trademark application. The EUIPO recalled that the applicant of a trademark must have the intention to use the trademark at that date. Banksy himself had never actually marketed any goods under the registered trademark before Full Colour Black filed its application for invalidity, nor had Banksy taken any legal action against those who commercialised goods featuring the artist’s most famous artworks. Although Banksy did launch a (web)shop named Gross Domestic Product, he openly stated that he had done so as a result of the ongoing legal dispute for the sole purpose of proving he was in fact using his trademark to commercialise goods.

All these elements led the EUIPO to conclude that Banksy had no intention to genuinely use the sign as a trademark at the time of filing, but only used it to circumvent EU trademark law’s requirement that the sign be used in the course of trade, thereby obtaining an exclusive right for purposes other than those falling within the functions of a trademark (the EUIPO here referred to its Sky decision C-371/18).

Key takeaways from the EUIPO’s decision

The EUIPO’s decision acts as a strong reminder of the economic and inherently commercial function of a trademark. Trademark owners should use their trademarks in the course of trade in relation to the goods and services covered by the registration, or else suffer the consequences of their trademark invalidation.

It also acts as a reminder that intellectual property rights and the exclusive right (in this case, with respect to a sign) they grant their owner cannot be relied on interchangeably, depending on the most suitable option for those seeking protection. The basic principles must remain those of freedom of trade and free competition.

The two-months’ time-limit to appeal the EUIPO’s decision has now expired, without Banksy or his legal representative having acted upon it, at least legally. Although maybe we should keep our eyes open for a more artistic statement.