Famous street artist Banksy has recently opened a pop-up store in South London, apparently in response to an EU trade mark invalidation action, filed by card manufacturer Full Colour Black (FCB) regarding Banksy’s famous ‘flower bomber’ trade mark.
FCB claim the registration is contrary to article 7(1)(b) of the EU Trade Mark Regulation 2017/1001 (EUTMR) on the grounds that the registration lacks distinctiveness due to it being a work of art (rather than a mark of origin). FCB argue that for trade marks to be eligible for protection, they need to be capable of denoting the origin of the goods or services to which they relate. They claim that Banksy has not used the ‘flower bomber’ image in a trade mark sense (i.e. as a brand) so it is not recognised by consumers as denoting the source of the goods. Additionally, they argue that, as the ‘flower bomber’ image has been used on products supplied by numerous third parties (seemingly with Banksy’s approval), the fact that products bear this image does not indicate their trade origin.
FCB also claim that given the widespread use of the ‘flower bomber’ image by third parties on their own products, the mark has become descriptive of the goods/services themselves, contrary to article 7(1)(c) of the EUTMR. FCB’s argument here appears to be that anyone purchasing goods incorporating the ‘flower bomber’ image does so because they like the artwork itself, rather than because they believe any such goods to have been made by Banksy.
Furthermore, FCB have claimed the registration was made in bad faith due to a number of reasons, including that Banksy never intended to use the image as a trade mark and that the registration has been used to monopolise the image and circumvent copyright law, contrary to article 59(1)(b) of the EUTMR.
The pop-up store - named ‘Gross Domestic Product’ which opened last week in Croydon - will apparently be open for two weeks. However, all sales will be made online. Items for sale include replicas of Stormzy’s union jack stab-proof vest (as seen at Glastonbury), as well as other quirky items including a Tony the Tiger rug and a disco ball made from police riot helmets.
Although the store opening will have no impact on the invalidity claim, it appears Banksy may be opening the store to, (in addition to PR purposes) try and establish use of the images of his various works of art (including the flower bomber), in a trade mark sense going forward.
In my view, the story highlights the importance of seeking legal advice about how best to protect trade marks by registration, as well as by their manner of use, to mitigate against the risks of attacks on validity or claims for revocation.
If you have any questions about protecting your intellectual property and would like to talk to someone about it, please contact our IP Team.
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