Banksy’s nightmare multiplies

About a year ago, CURELL SUÑOL reported news that had hit the European trademark scene: the cancellation of the European Union figurative mark No. 12575155 “The Flower Thrower” of the well-known artist and graffiti artist Banksy, its author, who operates through the British company Pest Control Office Limited to maintain his anonymity.

The loss of the registration followed an application made in March 2019 by Full Colour Black Limited for a declaration of invalidity of the said mark on the basis of Articles 59(1)(b), bad faith in the application, and 59(1)(a) in conjunction with Articles 7(1)(b) and (c), absolute grounds for refusal, of the EU Trademark Regulation. After a lengthy and complex procedure, the EUIPO found that there had been bad faith and that the registration of the mark should be cancelled.

However, the particular war between Full Colour Black Limited and Banksy did not end there and the invalidity proceedings for “The Flower Thrower” were only the first of many. Since that decision, Full Colour Black Limited has sought the invalidity of several of the trademarks owned by Pest Control Office Limited (Banksy’s legal representative), including EUTM 017981633 “Nola” or “Girl with an umbrella”, EUTM 017981624 “Love Rat”, EUTM 017981637 “Bomb Hugger”, EUTM 017981636 “Radar Rat”, EUTM 017981629 “Laugh Now” and, again, “The Flower Thrower”, re-applied for under EUTM 018118853.

The first four trademarks mentioned have followed the same path as “The Flower thrower” referred to at the beginning of the article and have been cancelled by the EUIPO. In all four cancellation decisions the Office has declared that there was bad faith when the marks were filed due to the following circumstances:

1. It is apparent from the evidence submitted that Banksy did not manufacture, sell or provide any goods or services under the contested marks or attempt to create a market for its goods until just prior to the filing of the invalidity actions;
2. When the owner filed the marks there was no intention to use them and actual use of the marks was only made after the commencement of the earlier proceedings No. 33843 against trademark application No. 12575155 “The Flower Thrower” and approximately one month prior to the filing of these four cancellation proceedings; besides, such use was identified as use to circumvent the requirements of trademark law and therefore there was no intention to actually use the signs as a trademark.
3. Banksy itself, through its representatives, admitted that the reason for starting to use the marks was to comply with the requirements of European trademark law, but that in no case did they intend to make any actual use of the registered signs in the course of trade.
4. The purpose of registering the marks was no other than to obtain legal protection that could not be conferred by copyright.

Please find attached a link to the website of the EUIPO database where you can download one of the four decisions mentioned (EUTM 017981633 “Nola” or “Girl with an umbrella”): https://euipo.europa.eu/eSearchCLW/#basic/*///number/000039872

As regards EUTM 017981629 “Laugh Now” and EUTM 018118853 “The Flower Thrower”, the decisions are not yet final. However, taking into account the above precedents, we are afraid that the result will be the same and the EUIPO decisions will not be appealed.

Banksy has jealously guarded his identity for years and has also played a particularly active role in the way he wishes his artwork is presented and sold. You will remember the work “Girl with Balloon” self-shredded just after it was sold at Sotheby’s in 2018, and also numerous complaints lodged against organisers of unauthorised exhibitions. Not to forget the trademark cancellations resulting from a dispute with a company that markets greeting cards, which are the object of this article. All in all, Banksy’s rebel image sometimes does not sit comfortably with his efforts to control the market for his work.

All those efforts are carried out by Pest Control, the company that authenticates Banksy’s works and sells them. There are many objects attributed to or associated with the artist that circulate since decades, from posters to singular projects such as his The Walled Off Hotel, described by the artist himself as “the hotel with the worst view in the world“, as it is located right in front of the wall separating Israel from the Palestinian territories, in Bethlehem.

In this context, there is also a growing number of fake products, which irritates the artist.

But one thing is undeniable: in the auction sphere, prints and artworks with Pest Control certificates are the only truly authentic Banksy works, and the market shows no signs of disinterest in them. They fetch astronomical sums. For example, at a Sotheby’s auction in September 2020, an authenticated print of “Girl with Balloon”, originally priced at £275, was sold for £438,500. In 16 years, the print had increased in value by almost 1,600 times its original purchase price. Two years before that, Banksy’s iconic self-shredded work reached almost £18.6 million, a record for the artist, and nearly 20 times its price before it was torn to pieces.

Author: Albert Olea