The company Pest Control Office Limited is said to represent the famous but still unidentified artist called BANKSY. The company filed an EU device trademark application, seeking protection for the “flower thrower”, the artist’s most iconic work. It first appeared more than 15 years ago as a graffiti in Jerusalem. The trademark application was filed in February 2014 and registered in September of the same year. Graphic Colour Black Ltd., a graffiti post card producer filed an application for a declaration of invalidity. EUIPO’s cancellation division declared that the owner applied for the trademark in bad faith as the purpose of the filing was “other than those falling within the function of a trademark”.


The EUIPO decision was issued in invalidity proceedings pursuant to Art. 59 EUTMR. The applicant, the company Graphic Colour Black Ltd, argued that the trademark owner had no intention to use the trademark. Any commercialisation of goods, after the ending of the grace period, had the sole purpose of circumventing the trademark validity requirement of genuine use. The filing was also an attempt to circumvent the copyright protection characterized by its lifetime plus 70-year limit, by the possibility of an eternal trademark protection. Banksy, known for his critical position regarding intellectual property, would have given free reign to the general public to use his works and issued public statements such as “any advert in public space that gives you no choice whether you see it or not is yours. It’s yours to take, re-arrange and re-use”.

The trademark owner argued that bad faith was not proven and that the artist had never agreed to any commercial use of the work. Banksy’s public statements, including those inciting to disrespect others intellectual property would not prohibit obtaining protection for a given sign, nor change the law in any way. Moreover, the fundamental right of the freedom of expression requires that public statements, also when fundamentally criticizing established principles of intellectual property protection, can be voiced without expecting acts of retaliation. Trademark law granted a five-year grace period during which the owner of a sign has no obligation to know the future use of a sign.

EUIPO’s cancellation division observed that there was no unique definition of the bad faith criterion. Though the relevant aspect in time was the moment of the trademark application’s filing, also previous and later aspects could become relevant in assessing the applicant’s state of mind. After having considered that the intentions of the trademark owner cannot be separated from those of the artist himself, the EUIPO considered that the trademark filing could have been motivated by the intention to circumvent possible problems the artist would face when enforcing copyright protection: the artists anonymity and the very nature of graffiti works (which usually do not enjoy the consent of the owner of the respective surface). Moreover, the artist himself had tolerated a widespread use, declaring openly that copyright was “for losers”.

The Cancellation division quotes the ECJs considerations in the decision SKY vs Skykick (C-371/18): bad faith was the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. Such criteria were met in the case at stake: in particular the attempt to commercialize goods in a very restricted manner but still sufficient to overcome the threshold of the genuine-use requirement would show a manner inconsistent with honest practices.

The decision is part of a case-law that has already been elaborated in the past and that concerns not only the works but also, more generally, the controversial figure of the artist. Such case-law, also considering Banksy’s anonymity, his statements and the same nature of graffiti works, raises questions that concern both copyright and trademark law. The decision is not final and it remains to be seen how the balance between the always delicate issue of limits to the accumulation of the various industrial property rights and a definition of the criterion of “bad faith” will be articulated in the future.

Tankred Thiem