Banksy can draw. We know that.
He can also lose. In his book, Wall and Piece, Banksy famously said that “copyright is for losers” because of the difficulties he has experienced trying to enforcing copyright in his works.
But does he know how to win? Apparently not, given his losing streak in recent, well publicised trade mark cases.
Perhaps trade marks are for losers too. Certainly, there is a good chance they will be if people take to heart a misinterpretation of the Banksy cases that has been doing the rounds about when you should apply to register a trade mark. We’d like to take this opportunity to set things straight.
Briefly (because it’s been widely reported elsewhere), in 2005, Banksy sprayed his now well known Flower Bomber image on a wall in Jerusalem. In 2014, a company called Pest Control Office (which acts as Banksy’s representative, so he can maintain his anonymity) successfully applied for an EU trade mark. A dispute arose in 2019 when a greetings card company called Full Colour Black wanted to use the image and so challenged the trade mark.
In response to the challenge, and after the proceedings had started, Banksy opened a store in Croydon, called Gross Domestic Product, selling stationary and decorative merchandise. At the time, Banksy issued a statement saying that opening a shop because of a legal dispute “is possibly the least poetic reason to ever make some art” and that “a greetings card company is contesting the trade mark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally”. In addition, a representative for Banksy said that he “had been advised the best way to prevent (losing the trade mark) was to sell his own range of branded merchandise”, and this was seemingly corroborated by one of his legal team who described the case as “frankly ludicrous” and outlined the legal strategy in comments to the press.
The trade mark authorities were not impressed and declared Banksy’s trade mark registration invalid. They concluded that, at the time the application for registration was filed, there was no intention of using the art work as a trade mark and that Banksy only wanted the registration to prevent use of the image by third parties. The use that was made subsequently through the shop in Croydon was not bona fide use because (as Banksy himself stated) it was only intended to prevent the trade mark being cancelled on the grounds of non-use.
Since then, a second case has gone the same way, and, at the time of writing, there are others in the pipeline, all apparently with the same problem. The appropriate way to protect Banksy’s artwork is through copyright, but he can only do this if he is prepared to lose his anonymity, which he does not want to do because it is a major part of his public persona. However, his attempt to get around this by using trade mark law instead was flawed because of the absence of any real intention to use the sign as a trade mark.
This has led some to suggest that a business should wait until it can unequivocally demonstrate use of a mark before applying to register it. Victor Caddy, Director & Trade Mark Attorney of Wynne-Jones IP Limited, says this is the wrong interpretation. “What matters is intention”, he says, “The Banksy case doesn’t offer us any real legal evolution and in some instances the interpretation we’re seeing can result in what is, quite frankly, bad advice.
He goes on to say “It has always been the case in this country that you can file an application to register a trade mark if you have a bona fide intention to use it. The crucial thing with Banksy is he never had this and so his trade mark applications were filed in bad faith”.
If your intention to use a trade mark is bona fide, best advice is to apply to register it as soon as you possibly can. Since the harmonisation of trade mark laws in the member states of the EU in the pre-Brexit days of the mid 1990s, rights in a trade mark in the UK usually go to the first to apply to register it, so delay until you can prove use is not only unnecessary, it is also possibly fatal. Someone else could apply to register a conflicting trade mark before you, and then they could prevent you from using and registering yours. In this eventuality, all your (probably considerable) investment in getting to the point where you can start to use the mark, would be wasted.
In the UK, the law provides a period of five years for a trade mark owner to begin using it commercially, so this is a good amount of time to develop a brand and start trading. By registering a trade mark early, not only do you get protection to see off copycats and pirates, but you can also invest in your brand with peace-of-mind.
Victor Caddy stands firmly behind the position of early registration to avoid problems later on “It really is a no brainer; check the name or logo you want to use is free to use before investing any money in it, and if it is – protect it. You then have five years to use it. As long as you have a genuine intention to use it when you file for registration and then go on to use it in a bona fide manner within those five years, you really shouldn’t have a problem”.
They say that “The road to hell is paved with good intentions” or, to put it another way, "Hell is full of good meanings, but heaven is full of good works". Banksy’s works included, perhaps. Maybe, then, Banksy will find the authorities in heaven more sympathetic to his cause than those of this world. In this life, however, it is the intention that counts.