The artist may be forced to do so by the difficulty in finding appropriate instruments to protect his or her works.

The case of the famous artist has been filed with the European Union Intellectual Property Office (EUIPO). Let us recall that Banksy is the pseudonym of a famous street artist. Banksy comes from Bristol and is known for placing his works in unusual places, mainly in metropolitan public spaces. The artist has not revealed his identity to this day.

However, the artist’s anonymity began to be exploited by other people. Hiding one’s identity makes it impossible to enforce copyright. Protection of copyright requires demonstrating subjective premises, and thus disclosing the author’s name. It did not take long for other entities to begin commercial use of Banksy’s works. One of them is the Full Colour Black company, which sells greeting cards featuring the artist’s graphics. The risk of widespread use of the artist’s works and the adopted concept of hiding one’s identity forced the artist to seek other legal institutions that would provide protection for his works. The creator reached for trademarks.

One of the artist’s many well-known works is the following graffiti titled “Flower Thrower” found in Jerusalem, depicting a man with his mouth covered throwing flowers as if they were Molotov cocktails:

(source: https://euipo.europa.eu/eSearch/#details/trademarks/012575155)

On 07/02/2014, Banksy, through the company Pest Control Office Limited, filed an application for the above illustration as a figurative trademark with the EUIPO. The mark was registered on 29/08/2014 under number EUTM 12575155 for a number of goods, including painters’ materials; sunglasses; office supplies; handbags; clothing and toys.

The entitled party officially expressed the position that the purpose of filing the above trademark was not so much the intention to actually use the trademark, but the desire to “block” other entities from commercial use of his works and protect the creator’s image.
The situation was exploited by the company Full Colour Black Limited, which filed an application with the EUIPO to invalidate the trademark EUTM 12575155, citing the so-called trademark application in bad faith. When examining the case, the EUIPO invalidated Banksy’s trademark, finding that the application had indeed been made in bad faith. In its justification, the body indicated that the essence of graffiti is that it is usually placed in public places so that everyone can see and photograph it. The fact that Banksy remains anonymous and impossible to identify therefore makes it difficult to protect his copyrights resulting from his art. Moreover, Banksy has repeatedly stated that “copyright is for losers”. In his book Wall and Piece 2006, Banksy clearly advocates for the ability of others to use works shared in public spaces. He also allows the general public to download and use his images.

In resolving the case, the EUIPO indicated that the evidence provided did not indicate that Banksy had ever used his trademark in relation to the goods for which it was registered before filing the application. The authority indicated that there were many articles published in well-known British magazines that mentioned Banksy opening an online store in 2019. In these publications, Banksy admitted that behind this venture was “probably the least poetic reason for making some art – namely a trademark dispute”. It was clear from these articles that the purpose of opening the store and introducing products to the market by the creator for which the trademark was registered was solely to defend against a potential allegation of non-use of the mark, and thus the intention to maintain the right to the trademark. The authority indicated that the evidence provided showed that Banksy had not manufactured or sold any goods under the disputed sign (or had not sought to create a market for them) before filing the application for invalidity. Banksy began selling merchandise but made it clear that it was only being sold to eliminate the possibility of trademark lawsuits and not to commercialise the goods.

Ultimately, the EUIPO found that, on the date of filing, the entity acting on behalf of Banksy, seeking protection, had no intention of using the sign as a trademark, i.e. in relation to goods and in order to indicate their source. The use, which began only after the proceedings before the Office were initiated, was treated as an attempt to circumvent trademark law. The EUIPO found that the mark had been filed in bad faith and was therefore subject to invalidation.

In this case, the interpenetration of two separate regimes of protection of intellectual property rights, namely copyright and trademark law, and Banksy’s difficulties in finding the right form of protection for his works are clearly visible. There is no doubt that the right choice of protection in this case should be copyright. Registration of a trademark does not protect a given sign in the abstract, but always in relation to given goods and in connection with their economic turnover. A trademark must be capable of distinguishing goods. The function of a trademark is to distinguish the goods of one company from the goods of another company by indicating their source of origin. The trademark therefore serves to convey to recipients the information that the goods marked with a given mark have the same origin.

The author’s strategy of anonymity has contributed to his success and popularity on the one hand, but on the other hand it has a negative impact on the possibility of using the most appropriate form of protection in this case, i.e. copyright law. Perhaps the problems presented will cause the artist to finally reveal his identity?

The EUIPO’s decision will undoubtedly also pose a threat to the artist’s other works protected as trademarks.