Banksy and the art of IP protection

Banksy, who famously claimed that "copyright is for losers", has lost his latest trade mark case. Is his decision to remain anonymous preventing him from obtaining IP protection for his art?

Last month, the European Union Intellectual Property Office (EUIPO) issued a decision declaring that the trade mark owned by Banksy for his image Laugh Now (2002) is invalid on the grounds that it was filed in bad faith. The famous image depicts a chimpanzee wearing a sandwich board which bears the text, "laugh now, but one day we'll be in charge". The work was commissioned by a nightclub in Brighton where it first appeared.

Trade marks are designed to protect anything that identifies the goods, services and brand of a business, and are commonly used to protect brand names, logos and signs. Pest Control, the company that authenticates Banksy's works of art, filed for an EU trade mark of Laugh Now in November 2018. Full Colour Black (FCB) opposed the trade mark the following year. FCB specialise in street art greeting cards and sell cards with the Laugh Now image. FCB applied to invalidate the registration of the trade mark, claiming that the application was filed in bad faith.

Bad faith

Article 59(1)(b) of the European Union Trade Mark Regulations (EUTMR) provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of bad faith – it is subjective based on the applicant's intentions when filing the trade mark – but must be based on the actions of the applicant. It is considered bad faith if it is possible to demonstrate that the applicant had no intention to use the mark when filing the application. The burden of proof lies with the party who applies for cancellation, which means good faith is presumed unless it can be proved otherwise.

The decision

The trade mark was found to be invalid under Article 59(1)(b). The EUIPO held that there was no intention by Banksy to genuinely use the trade mark at the time it was filed.

The judgment noted that there was no evidence that Banksy was selling any goods related to the contested trade mark until a similar claim was filed the year before when he set up an online shop to sell merchandise. The EUIPO held that the online shop was not a genuine attempt to commercialise goods or provide services, but instead an attempt to circumvent the legal requirements of trade marks.

The EUIPO also cited the following reasons:

• The work is a piece of graffiti sprayed in a public place that was free to be photographed by the general public and has been distributed widely
• Banksy provided high-resolution versions of his work on his website and invited the public to download them and produce their own items using his work
• Banksy chose to paint graffiti on other people's property rather than to paint it on canvasses or his own property

The judgment noted that Banksy has chosen "to be very vocal regarding his disdain for intellectual property rights", but that these comments would not make any acquired rights invalid or affect the decision.

Could Banksy rely on copyright to protect his work?

Copyright is a legal right over an original piece of work and is often used to protect artistic works including paintings from being copied or reproduced. These works do not need to be actively used for protection to apply, which Banksy could find useful.

However, the judgment commented that Banksy's ongoing decision to remain anonymous would "hinder him from being able to protect this piece of art under copyright laws without identifying himself." Without Banksy revealing his identity, it would not be possible to prove that he was the original creator of the works, which is a requirement for copyright protection. In contrast, this is not required for trade mark protection.

Previous decisions

This is the second time that FCB have successfully opposed an EU trade mark application by Banksy. The first EUIPO decision was in 2018 and concerned Banksy's Flower Thrower, which was found to be invalid for similar reasons – there was no genuine intention to use the trade mark. There are reportedly five further cases pending before the EUIPO, and it also remains to be seen if Banksy will be successful in registering trade marks in other jurisdictions.