Bad Faith: Banksy's Legal Battle and Intellectual Property

September 22, 2020

Earlier last week, an EU trade mark registered by Pest Control Office Limited (representing the artist known as Banksy) which consisted of his ‘flower bomber’ artwork, was cancelled by the European Union Intellectual Property Office (the EUIPO) for being registered in ‘bad faith’. This was following a challenge to the validity of its registration by a greetings card company, Full Colour Black Limited. Full Colour Black (and lots of other manufacturers of different products) have been using Banksy’s artworks for many years to sell their products. Banksy’s company, Pest Control Office, had attempted to register his works as trade marks, which would prevent other companies from using them on their products. These attempts by Pest Control Office included opening a pop-up shop in London to show that they were using the works as trade marks in the course of their business.

The EUIPO in its ruling noted that it believed that Banksy, to avoid having to reveal his true identity, was incorrectly trying to use trade mark registration to protect his intellectual property, rather than the laws of copyright, which are the appropriate method of protection for works of art like ‘flower bomber’. ‘Flower bomber’, and the other images Pest Control Office have registered as trade marks, are not being used as trade marks. This was the ‘bad faith’ which led to the cancellation of the registration – there was no intention by Pest Control Office to use the work as a trade mark, or to engage fairly in competition, in a way which fell outside the permitted functions of a trade mark.  Why has Banksy pursued this strategy? Because, in order to rely on copyright to protect his artworks, he would have to give evidence in court that he was the creator of the works in question – so revealing his real name!

This case brings out the importance of understanding what type of intellectual property right your business is creating, so that you can take the right steps to protect it. So, we thought it would be useful to give a quick explanation of the difference between copyright and trade marks, so that you don’t end up doing a Banksy…

What does copyright include?

  • Protects the expression of ideas, not the ideas themselves – so your great idea for a novel is not protectable, but the novel you write is. You need to turn the idea into something ‘tangible’ – take it out of your head and create something which represents the idea in some way – then you have a ‘work’, which copyright can protect.
  • A wide range of works qualify for protection – photographs, blogs, books, artworks of all types, and – of particular importance for tech startups – software code.
  • To qualify for copyright protection, the work must be the author’s own original intellectual creation, embodying their free and creative choices.
  • Copyright arises automatically on creation of the work, with no registration required. Protection for most types of works lasts for the life of the author plus 70 years.
  • However, if you want to show that someone else is infringing your copyright work, you will need to prove the existence of your right by showing when and by whom your work was created. It’s really important – especially if your business creates a lot of copyright works – that you keep a permanent record of their creation – dates, times, author, and so on.

What do trade marks include?

  • A ‘badge of origin’ which allows consumers to identify the provider of goods and services.
  • Trade marks can be words, logos, slogans, or even colours and sounds. However, marks which are purely descriptive (such as ‘Plumbing Services’ or ‘Fresh Fruit and Veg’) cannot be registered. The mark must be intended to function as a trade mark.
  • The trade mark must be registered in each territory in which you seek protection of the mark – but the EU trade mark gives protection across all the Member States.
  • Trade marks are registered for designated ‘classes’ of goods and services – until your mark has developed a ‘reputation’ (i.e. it has become well known by relevant consumers), the protection given by the registered trade mark will only extend to the use by other businesses of identical or confusingly similar marks for goods and services which are identical or similar to those for which your mark is registered.
  • If you wish to register a trade mark, you need to carry out searches of existing trade mark registrations in your chosen territories to make sure no-one else has registered a mark which is identical or similar to yours – this ‘clearance search’ will let you know whether your application to register your trade mark is likely to be opposed by existing rights holders.
  • Registration lasts for an initial 10 years, but can be renewed indefinitely for relatively small fees. After the first 5 years, you may need to prove that you are actually using your mark in the course of trade for the goods and services for which it has been registered – the system is designed to stop marks sitting on the register unused if others wish to use them.

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