After a two-year dispute with UK greeting card company Full Colour Black, the anonymous street artist Banksy has lost the EU trade mark rights to his iconic Flower Thrower artwork.
Once sprawled across a garage wall in Bethlehem, this image is no longer a secure asset in Banksy's intellectual property portfolio. The decision places his remaining trade mark registrations at significant risk and serves as a critical case study for brand owners regarding "bad faith" filings and the necessity of genuine commercial use.
The EU Intellectual Property Office's (EUIPO) decision offers vital lessons on the intersection of copyright, trade marks, and commercial strategy.
Key takeaway
There are different legal tools available to protect creative assets, but they are not interchangeable. Trade mark and copyright protection have distinct functions and requirements. Attempting to use a trade mark to bypass the requirements of copyright law, specifically the need for an artist to reveal their identity, can backfire if the mark is not genuinely used in commerce.
The EUIPO decision
Having famously declared that "copyright is for losers," Banksy sought trade mark protection for his artworks in 2014. The Flower Thrower was registered in the EU for a range of goods, including sunglasses, building materials, and Christmas tree decorations. This strategy aimed to secure protection without relying on copyright law, which would require Banksy to waive his anonymity.
In March 2019, Full Colour Black (FCB), aiming to use the image on greeting cards, requested the cancellation of the registration under Article 59(1)(b) of the European Union Trade Mark Regulation (EUTMR). They argued the mark was filed in bad faith because Banksy had no intention of using it.
In October 2019, seemingly in response to the legal threat, Banksy opened a pop-up store in London selling Flower Thrower merchandise. This was an attempt to demonstrate "use" of the trade mark. Prior to this, the mark had never been commercially used by the artist.
Invalidation on the basis of bad faith. The EUIPO ruled that a trade mark registration is invalid if the applicant acted in bad faith at the time of filing.
A finding of bad faith requires:
Conduct that "departs from accepted principles of ethical behaviour or honest commercial and business practices."
A dishonest intention on the part of the trademark owner.
The EUIPO found that Banksy had filed the application:
Without any intention of using the mark for the goods listed.
Without the aim of engaging fairly in competition.
With the intention of undermining third parties (like FCB) in a manner inconsistent with honest practices.
With the intention of obtaining an exclusive right for purposes other than the proper function of a trade mark (i.e., identifying the origin of goods).
Crucially, the EUIPO dismissed the London pop-up store as a valid defence. They deemed it an attempt "to commercialise goods... but only to circumvent the law" rather than a genuine entry into the market. Consequently, the mark was declared invalid, and costs were awarded against Banksy.
How would this case be decided in Australia?
An Australian court would likely reach a similar outcome, though via a different legal mechanism.
Bad Faith (Section 62A) The Trade Marks Act 1995 (Cth) allows for the cancellation of marks filed in bad faith. However, the Australian threshold is high, requiring conduct that "reasonable and experienced persons in the field" would view as falling short of acceptable commercial behaviour. Banksy's strategy might survive this specific test.
Non-Use (Section 92) The greater risk for Banksy in Australia would be a non-use application. Section 92(4) allows for the removal of a mark if:
The owner had no intention to use the mark and has never used it in good faith; or
The owner has not used the mark in good faith for a continuous period of three years (provided five years have passed since the filing).
In an Australian context, Banksy would need to prove he applied for the mark with the intention of using it as a "badge of origin" for goods. Since he could not show use prior to the pop-up store (which was opened solely to defeat the legal challenge), the mark would likely be removed. Under Australian law, "use" must be real and commercial, not merely token use to protect a registration.
The copyright alternative. Unlike the EU, Australian copyright law (section 189 of the Copyright Act) allows authors to use a pseudonym and still own copyright for 70 years. Banksy would not necessarily need trade mark law to protect his work here. However, uncertainty remains regarding the protection of illegal works (graffiti) displayed in public places, a relevant factor for street artists.
Broader questions
This decision raises broader questions for businesses and the art world:
Should artistic works be monopolised through trade mark registration, which can technically last forever?
Is there a need for stronger legislative protection for artists who wish to remain anonymous?
Should illegal graffiti in public spaces be granted copyright protection?
The fine Art of IP protection
This case serves as an important reminder: Use it or lose it.
Trade marks are designed to protect brands in the marketplace, not to warehouse artistic rights. For Banksy, this decision exposes his wider portfolio to "bad faith" attacks.
For businesses and artists alike, the lesson is clear: copyright remains the primary protection for creative works. Trade marks are a powerful commercial tool, but only if you meet the criteria for genuine use.
Stakeholders impacted:
General Counsel
Brand Managers
Marketing Directors
Creative Directors
