Banksy's 'flower bomber' case highlights trade mark pitfalls for businesses, explains George Festing, disputes and IP lawyer at Muckle LLP.
Your business will own intellectual property – like your company’s designs, brand identity and more – and this needs looking after just like any asset. When artist Banksy lost his battle with North Yorkshire based greetings card firm Full Colour Black over his ‘flower bomber’ trademark, it highlighted several intellectual property implications that may apply to many businesses.
In this high profile case, Banksy had sprayed an image of a protestor throwing a bunch of flowers, onto a wall in Jerusalem in 2005. Banksy’s company applied for a trade mark on the image in 2014, to try to stop others using it. That trade mark registration has been successfully challenged by Full Colour Black, so what can the rest of us learn from this?
Trademark troubles
In September, the European Union’s Intellectual Property Office (EUIPO) threw out Banksy’s trade mark saying that the registration was “inconsistent with honest practices” because EUIPO found Banksy had filed the trade mark to avoid using copyright laws to protect the image which would have required him to reveal his famously secret identity. But for a trade mark not to be susceptible to challenge, it must be put to genuine use within five years of registration. Here, EUIPO found Banksy hadn’t used the trade mark until Full Colour Black challenged the trade mark in 2019.
It found that only then did the artist set up an online store and shop front in Croydon, South London, making goods to fulfil trade mark categories. EUIPO said it was clear that Banksy had no intention of using the trade mark when he filed it and that the goods he sold were an attempt not to lose the trademark.
Banksy has vocalised his disdain for intellectual property rights, having previously said that ‘copyright is for losers’.
Why bother?
Full Colour Black say that they have filed a further six challenges to Banksy’s trade mark registrations, potentially putting his portfolio at risk. Most artists rely on copyright to protect their work, but Banksy sought to rely on the registration of trade marks in order to try to preserve his anonymity. Reproducing Banksy’s works without a license would be likely to infringe his copyright in those works. But in bringing proceedings in relation to that infringement, Banksy would have to evidence his ownership of copyright and that would require him to reveal his identity.
Making the most of your mark
1. Use it or lose it Do you own a trade mark? If so, do you use it? If you don’t it may be vulnerable.
2. Keep up to date Is your trade mark up to date? Some businesses refresh their brand without refreshing their trade mark registrations. This can leave them paying for a mark that they are no longer using and that does not offer them any brand protection.
3. Monitor your registrations You can set up a ‘watching service’ to look out for applications that might encroach on your trade mark enabling you to act quickly to deal with any potential problems.
4. Assess the costs. Maybe registering a trademark is not actually what you need (as this case indicates). It might be better first to seek professional advice to ensure that you have the right protection in place for your needs.
Need some help?
If someone steals your intellectual property – copies your ideas, brand, slogans, products or services – it can seriously dent your profits and reputation – so it’s worth asking an expert on how best to protect your assets to ensure that does not happen. We never charge for initial chats and we also offer some fixed cost services, like our IP MOT and trademark portfolio management packages, which make protecting your intellectual property easier to budget for.
