In February 2014 Pest Control Office, the company that holds the trade marks associated with Banksy, applied to register the image of the Flower Thrower as a European Union trade mark: the figure of a protester throwing a bouquet. On 14 September 2020 the Cancellation Division of the European Union Intellectual Property Office (EUIPO) declared the mark invalid at the request of another company, Full Colour Black. The ground was bad faith. The artist’s anonymity featured in the reasoning.
The press summed up the chain of reasoning as ‘Banksy loses his trade mark for not revealing who he is’, and that is inaccurate. The Division declared the mark invalid because it concluded that, when the application was filed, there was no genuine intention to use the sign as a trade mark, that is, to identify the commercial origin of goods. Anonymity came in earlier, as an explanation of motive: to defend the work through copyright, the Division wrote, Banksy would have to give up his anonymity, which would weaken his public persona; on that view, the mark had been filed to secure rights over the image without such exposure, ‘but that is not the function of a trade mark’.
A particularly revealing part of the evidence came from the artist himself. In October 2019, with the invalidity proceedings already under way, he opened Gross Domestic Product, a shopfront that could not be entered, whose products were sold online. His statements at the time explained that he had spent months making things for the sole purpose of covering the trade mark categories under EU law. The Division read those words as a sign of use created to satisfy the registered categories formally, not as the expression of a genuine intention to use the sign as a trade mark. The shop can be seen as one more Banksy work, with its irony about commerce and property; in the case file, however, his statements about its purpose served as evidence against him. The decision became final, as the Office itself later recorded.
Two years later a different reading emerged. Pest Control had also registered the monkey holding the placard ‘Laugh Now, But One Day We’ll Be in Charge’, and Full Colour Black again applied for a declaration of invalidity. The Cancellation Division granted it in May 2021 on similar reasoning. This time Pest Control appealed, and on 25 October 2022 the Fifth Board of Appeal of the EUIPO annulled that decision and upheld the mark.
The Board addressed anonymity head-on. The fact that Banksy chose to protect his work through a trade mark because it was more effective and allowed him not to reveal his identity, it wrote, in no way shows that he did not intend to use the mark when he applied for it. On the phrase Banksy had written years earlier, ‘copyright is for losers’, it was blunter still: it has no relevance whatsoever to the case. Criticising copyright is an opinion protected by freedom of expression, and no fraudulent use of the trade mark system can be inferred from it.
The same circumstance, an artist who does not want to reveal who he is, thus received two opposing readings within the same office, albeit in different case files and concerning marks applied for at different times. For the Cancellation Division, anonymity helped explain an improper use of the trade mark as a practical substitute for a copyright that is hard to enforce without revealing one’s identity. For the Board of Appeal, preserving anonymity could explain the choice of trade mark protection, but it did not show a lack of intention to use, nor bad faith.
What set one case apart from the other? Timing was a central difference, but not the only one. The monkey mark was applied for in November 2018 and registered in June 2019; invalidity was sought in November of that year, while the proprietor was still within the five-year period allowed for putting the mark to genuine use. The Board held that the absence of use up to that point did not prove fraudulent intent at the filing date. It also rejected the argument that the public dissemination of the work, the preservation of anonymity or the phrase ‘copyright is for losers’ demonstrated bad faith. In the Flower Thrower case, by contrast, the mark had been applied for in 2014 and the use relied on appeared in 2019, after the grace period had expired and once the invalidity proceedings were already under way. The Board stressed that difference in timing, but it was deciding a different case file and made clear that the first decision did not bind it.
There is, therefore, no uniform doctrine on anonymity. What remains is a final decision that built it into its explanation of bad faith and a later one, issued in a different case file by a higher administrative body, that denied bad faith could be inferred from it. According to a specialist legal source, in November 2022 Pest Control held fifteen trade marks in the Union, seven of which had been challenged and six declared invalid at first instance; only the monkey mark had been appealed, with a favourable outcome. That was the position at the time, not today. A second Flower Thrower mark, registered in 2020, was partially declared invalid in December 2023, and I have not been able to confirm what happened next.
The case matters beyond Banksy. A work whose author has made anonymity part of his persona comes up against institutions that need to establish who is applying for a right and for what purpose. The Office did not ask who Banksy is; it examined what Pest Control intended in registering the images and inferred it, in part, from what the artist had said and done in public. His remarks and his shop, elements of a persona built with humour against property, ended up being read as evidence of intent before a registry. The Board of Appeal played that reading down: that opinion did not prove bad faith, and preserving anonymity did not show a lack of intention to use.
That a Board of Appeal later rejected that chain of reasoning in another case file shows that the question has no automatic answer. Its decision on the monkey establishes that choosing trade mark protection so as not to reveal one’s identity does not in itself show bad faith or a lack of intention to use. It did not overturn the invalidity of the Flower Thrower mark, which remained final. Rather, it left two different outcomes, built on different case files, dates and evidence.
On the open conversation
This text examines two EUIPO decisions on Banksy trade marks: the declaration of invalidity of the first Flower Thrower mark for bad faith (Cancellation Division, 14 September 2020), in whose reasoning the artist’s anonymity carried weight, and the decision of the Fifth Board of Appeal on the ‘Laugh Now’ monkey (25 October 2022), which rejected the idea that preserving anonymity through a trade mark allows bad faith to be inferred. I do not claim that Banksy lost his trade marks for being anonymous, nor that the EUIPO has laid down a rule on anonymity: the first invalidity rested on the lack of a genuine intention to use, and the Board of Appeal, which did not review that case file, distinguished the cases by their timing and further rejected the argument that anonymity, public statements or the dissemination of the work were enough to prove bad faith. What interests me is that the same circumstance received two opposing readings within the same institution, and that an artist’s remarks and shop ended up serving as evidence of intent. If anyone wishes to contribute from the perspective of trade mark law, the history of street art or the practice of artists who work under a pseudonym, this notebook remains open.
Sources
EUIPO, Cancellation Division, decision 33 843 C of 14 September 2020 (Full Colour Black Limited v Pest Control Office Limited), concerning European Union trade mark No 12 575 155: declared invalid in its entirety for bad faith, with costs of EUR 1,080.
EUIPO, Fifth Board of Appeal, decision R 1246/2021-5 of 25 October 2022, concerning trade mark No 17 981 629: annuls the Cancellation Division’s decision of 18 May 2021 and rejects the application for a declaration of invalidity. It reproduces the annulled decision at length.
Kluwer Trademark Blog, ‘Laugh Now, Banksy!’, 14 November 2022, secondary source for the count of Pest Control’s trade marks at that date.
On the second Flower Thrower mark (No 18 118 853), secondary legal sources agree that it was partially declared invalid on 21 December 2023; the primary decision has not been checked directly.
Notes on the decisions
The 2020 declaration of invalidity was based on bad faith under Article 59(1)(b) of the European Union Trade Mark Regulation, on the finding that there was no genuine intention to use the sign as a trade mark at the filing date (7 February 2014). The other grounds relied on were not examined. According to the 2022 Board of Appeal decision, that invalidity is final.
In 2022 the Board of Appeal, which had not reviewed the Flower Thrower case file, rejected the argument that choosing trade mark protection so as not to reveal one’s identity showed a lack of intention to use, held ‘copyright is for losers’ to be irrelevant and distinguished the case, among other reasons, because the mark was still within the five-year grace period. No subsequent appeal to the General Court has been found.
The November 2022 count describes the position at that date, not the current one. The subsequent status of trade mark No 18 118 853 could not be confirmed.