Use it or lose it

By Winnie Lok, Solicitor & Despina Lyons, Paralegal and Trade Mark Attorney

9 October 2019

In a surprising move recently, world renowned anti-establishment street artist Banksy opened a pop-up store, called ‘Gross Domestic Product’, in London to sell various merchandise relating to his street art. However, curiously, the store is not open to the public. Banksy’s motivation behind opening Gross Domestic Product is what he describes as the “least poetic reason to ever make some art” –  he was forced to open the store in order to protect a trade mark which is currently being challenged by greeting card company, Full Colour Black. Full Colour Black is seeking to have Banksy’s ‘flower bomber’ trade mark, a mark that reflects one of Banksy’s most famous works of art, revoked on the basis that he has not used the trade mark commercially and the trade mark has become generic and declared invalid on the basis that the graphic does not act as a trade mark and was actually applied for in bad faith for the purpose of circumventing copyright laws. This saga is a beautiful mess of different IP issues, so we have unpacked it all for you below.

The background to the legal dispute in the EU

Just like in Australia, when an EU trade mark is filed a suite of goods and/or services must be specified, in relation to which the trade mark will be applied/used. If the mark becomes registered and then later is not used in relation to those goods and/or services, the registration or parts of it can be challenged on the basis of ‘non-use’.

At first glance, Banksy’s situation may come across as just another trade mark revocation action on the grounds of non-use. However, in light of the comments made by the opponent Full Colour Black questioning Banksy’s intentions behind the registration of the trade mark, the validity of the trade mark itself must also be considered.

Again, just like in Australia, under the Regulation (EU) 2017/1001, an EU trade mark can be revoked or declared invalid on multiple grounds. The relevant grounds for revocation in Banksy’s current dispute include the absence of genuine use, and also that the trade mark has become commonly used in relation to its registered goods or services and the trade mark owner has not taken appropriate steps to prevent this. This latter issue is frequently called ‘generic use’ or ‘genericide’, and is the curse of all trade mark owners – if you do not protect your mark and allow it to fall into generic use, your ability to defend your mark dissipates and fades away over time.  This is not favourable to Banksy as his use of the ‘flower bomber’ illustration has been limited to street art (the original of which is located in Jerusalem) and by the fact that he has long encouraged people to reproduce his work for personal enjoyment and activism. By encouraging people to reproduce his work (including works he has applied for trade mark registration in respect of), Banksy is effectively and actively relinquishing control of his works and allowing others to use his trade marks in ways that do not equate to the trade mark being used as a badge of origin.

In order to circumvent the non-use action, Banksy elected to go to the trouble of creating a pop-up shop (one that will apparently not take customers and only sell online) so as to apply his trade mark in the manner contained under his trade mark registration, and ward off the non-use threat.  However, if Banksy has opened up the pop-up shop solely for the purpose of responding to a non-use revocation action, it may be too little too late and the European Union Intellectual Property Office may consider this use to be insufficient, or not genuine.

In addition, like in Australia an EU trade mark can be declared invalid under Regulation (EU) 2017/1001 if it is registered in bad faith. This applies where the applicant had illicit purposes at the time of filing the application for the trade mark. Full Colour Black is arguing that this is relevant to the trade mark in question as Banksy applied for the trade mark with the ulterior motive of relying on trade mark protection to avoid having to reveal his identity to prove ownership of copyright; they argue that Banksy never intended to use it as a trade mark in the first place. To be totally clear, this intersection and juxtaposition of two otherwise separate strands of intellectual property law – copyright and trade mark law – is fascinating.  The reason it is relevant here is because copyright works have authors, trade marks do not. Copyright works can be authored by one entity and owned by another. Trade marks are simply owned. Banksy, being notoriously diligent in protecting his true identity, clearly constructed a strategy in this case that enabled him to retain his anonymity and still procure some form of intellectual property protection.

What would happen if this took place in Australia?

As noted above, similar laws apply in Australia. Under the Trade Marks Act 1995 (Cth), a trade mark is defined as “a sign used, orintended to be used, to distinguish goods or services dealt with or provided in the course of trade”. The legislation provides that a trade mark can be removed on either or both of the following grounds:

  • the applicant had no intention in good faith to use the trade mark in Australia; and/or
  • the trade mark was not used by the registered owner in relation to its registered goods or services within the first three years of its registration (non-use application).

There are also grounds available for cancelling a trade mark if it has become generic.

Each of these grounds are relevant to Full Colour Black’s allegations. This means that in order for Banksy to be successful against Full Colour Black, he would need to prove that he applied for the trade mark registration in good faith and that there has been use of the trade mark within the first three years of its registration in Australia. If the matter arose here, in order for Banksy to prove good faith, the Trade Marks Office would need to be satisfied that the trade mark was applied for with the intention of being used as a badge of origin or branding function. In relation to whether there has been use, use must be in Australia and in trade or commerce as per the definition of a trade mark. This can include actual sales of goods or services, an offer to sell goods or services or showing an intention to sell goods or services that go beyond preliminary steps. Banksy’s conduct in creating the pop-up store as a direct response to a legal action and for the purpose of maintaining his trade mark registration would likely not be sufficient in Australia to constitute genuine use and also would likely not be within the appropriate time window here in Australia and therefore, Full Colour Black would have a high likelihood of success in a non-use application. Regarding the time window, it is important to note that a trade mark owner cannot start using a trade mark in an attempt to overcome a non-use removal application once a non-use removal application has been filed. The use must have occurred before the non-use removal application was filed. In Australia, Banksy’s actions of opening up the pop-up store would be too little too late.

As noted above, a trade mark can also be cancelled in Australia if it becomes generic. Under this ground, Full Colour Black would be arguing that the image trade mark no longer functions as a trade mark. Since Banksy is allowing others to use the image with no restriction, the image is now non-distinctive and no longer functions as a badge of origin for Banksy.

If Full Colour Black were to be successful in its application to remove the trade mark from the EU trade marks register and continued to sell greeting cards featuring the ‘flower bomber’ graphic as they have been to date, Banksy would still have other legal remedies (in Australia his available causes of action would be actions for misleading or deceptive conduct or misrepresentation under the Australian Consumer Law (ACL) or under the common law tort of passing off). On Full Colour Black’s website, they refer to themselves a “contemporary art licensing company” which may imply to consumers that there is a licensing agreement in place between Full Colour Black and Banksy to sell greeting cards featuring his artworks. It is apparent that Full Colour Black has profited from relying on Banksy’s reputation as their bestselling products feature Banksy’s artwork.

It is a very interesting matter, and it is not clear whether Banksy is serious about his rights here or merely trolling the opponent and the EU trade mark authorities. He has certainly done worse, including selling his artwork at auction for millions of pounds only to shred it immediately once the auction was completed. Although it is early days for Full Colour Black’s application against Banksy’s ‘flower bomber’ trade mark in the EU, we consider that the removal/invalidity application would play out similarly if filed in Australia, so it will be interesting to see how this one unfolds. 

What does this mean for you?

This legal dispute highlights the importance of properly managing your trade marks, as the law catches everyone eventually – even cult heroes like Banksy. Mark owners need to ensure that they are regularly reviewing their trade mark portfolio and ideally using their trade marks as a badge of origin in respect of their goods and services of interest. The case also illustrates the benefits of maintaining records of use so that if a trade mark registration is challenged (such as for non-use) you can easily prove use and overcome the challenge.

The case also shows that care needs to be taken with how you actually use a trade mark. A trade mark must be used as a badge of origin to satisfy the definition of use as a trade mark. Care needs to be taken to avoid using your trade mark in a descriptive versus distinctive way to ensure it does not become generic or descriptive of your product itself instead of indicating that the particular good or service emanates from your business.

Anisimoff Legal is a full-service trade mark and brand specialist, and we can provide advice regarding initial trade mark availability and registration but also advise on the proper use of trade marks and strategies to minimise the risk of your trade mark registration being challenged.

If you would like further information on trade marks and protecting your brand, please contact us. We can provide tailored legal and practical advice to assist you in registering and managing your trade mark portfolio.

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