Banksy fight may paint a different picture under Australian trade mark law 01: it's not just a question of faith

Famous graffiti street artist Banksy's battle with London-based greeting card company Full Colour Black has reached Australian shores. The European Union Intellectual Property Office (EUIPO) decisions suggest that the Australian oppositions to registration will have to resolve a number of interesting questions that go to the heart of what ought to be the subject of the statutory monopoly in Australia for trade marks.

This series will deal with key issues arising from the EUIPO's approach and its intersection with Australian trade mark law. We will explore a number of key issues central to the registration and enforcement of trade marks, including:

• the ways bad faith can established;
• what is using or intending to use a sign "as a trade mark";
• the vexed issues associated with ownership; and
• what do the magic words "capable of distinguishing" really mean.

To kick off the series, first we'll summarise the key features of the dispute and the possible opposition grounds, and then we'll examine how the "bad faith" and "ownership" issues could play out under Australian law and compare them with the EUIPO outcomes.

The backstory to Banksy's trade mark battle

Banksy is an alias for a famous UK-based graffiti street artist whose works appear on streets, walls and bridges around the world. The artist is notorious not only for the rebellious and political artworks but also for the artist's secret identity. To avoid having to disclose Banksy's identity recourse has been to trade mark law.

Banksy attempted to register the following six artworks as trade marks in the European Union through an entity named Pest Control Office Limited (PCO):

In 2019, Full Colour Black Limited, a UK company that sells greeting cards printed with graffiti and street art, sought to cancel each of the EU marks on the basis that they had been registered in bad faith or were otherwise non-distinctive, distinctiveness being the essence of a trade mark.

In December 2020, the EUIPO cancelled Banksy's trade mark for Flower Thrower. Subsequently, in May and June 2021, the EUIPO declared that Banksy's other five other marks were also invalid and should be cancelled.

The EUIPO was highly critical of Banksy's conduct, stating that the artist had applied to register the trade marks in bad faith, finding there was no intention to use them for the goods or services for which they were registered. 'Use' only began after Full Colour Black sought cancellation in order to satisfy the "use" requirements of trade mark law. On this basis, the Court found that Banksy's use was not genuine and so the registrations were not support when filed by the necessary intention to use the artworks as trade marks.

Banksy is now trying for a different outcome in Australia by attempting to register, again via PCO, Flower Thrower and the following mark in Australia, which Full Colour Black Limited has opposed:

The next step is for Full Colour Black to file its Statement of grounds and particulars setting out the basis of its oppositions.

What might an Australian opposition to Banksy's trade mark applications look like?

While Full Colour Black Limited may wish to raise the same issues the EUIPO considered, it will need to massage them into the grounds of opposition available in Australia.

Taking account of the EUIPO decisions, likely grounds of opposition appear to be that:

• PCO had no bona fide intention to use each "sign", that is each artworks, in Australia as a trade mark at the date filed;
• PCO is not the "owner" of either trade mark;
• PCO's applications were each made in bad faith; and/or
• each sign (artwork/trade mark) is not "capable of distinguishing" PCO's goods/services from the goods/services of other traders.

Only one ground of opposition would need to be made out for registration to be refused.

Each of the above grounds is the subject of a significant body of case law, which will be explored in more detail in this series.

What issues might arise under Australian trade mark law?

The EUIPO considered that the artworks (signs) were not being used as trade marks.  The use was to prevent non-use cancellation actions. At the time of application, neither Banksy nor PCO had marketed or sold any goods or services using the marks. Even after registration, it was not until Full Colour Black commenced proceedings to invalidate the marks in 2019 that steps were taken to produce and sell certain goods. The evidence showed that Banksy's motivation was solely defensive: to stymie findings of non-use.

In Australia the applications will be assessed as at their application dates.  Pest Control will have to show actual use as trade marks or an intention to use or authorise a licensee to use of the marks for some or all of the wide range of goods and services applied for. Any copyright in the signs artistic works is not relevant. What is crucial is how they have been used or are intended to be used. That is a factual question independent of copyright, which exists be virtue of creation. While the EUIPO was not required to consider distinctiveness once it had concluded that the applications were made in bad faith, it was nonetheless alleged by Full Colour Black that the marks in issue there were not capable of distinguishing the goods or services of one trader. Time will tell whether the same issue arises in Australia.

The EUIPO also had regard to the fact that Banksy allowed members of the public to download and use his images as they wished, provided they were not used for commercial purposes. If this issue arises, the challenge PCO may face is establishing the requisite level of control over such use to justify an argument that the use was 'authorised' for the purposes of the Act and ought therefore inure to PCO's benefit. This would be a question of fact to be dealt with by way of evidence. If the intent was simply to allow persons to use the copyright in the works, then that would likely be insufficient to demonstrate the requisite intent required for the purposes of trade mark law.

Ultimately, while the EUIPO found that Banksy's marks were filed in bad faith, in Australia the threshold is relatively high to establish that ground, namely that the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. If bad faith is raised as a ground of opposition, Banksy's conduct will need to be scrutinised in respect of the marks. The fact that Banksy intended protect the artworks via trade mark registration because of the difficulties faced in enforcing copyright may not itself be fatal if it can otherwise be shown that the marks are intended to be used as trade marks. It does however tend to undermine the assertion of bona fide intention as the motivation does not accord with the policy that underpins trade mark registration.

It will be the evidence and inferences to be drawn from the facts that will determine the claim to use or bona fide intention to use the artworks as "signs" that act as trade marks.  The difficulties in establishing bona fides before the EUIPO may be of background relevance but there is old Anglo-Australian authority indicating that defensive use to avoid cancellation can be bona fide use. 

Ownership and authorship of trade marks: the EUIPO position vs Australia's

"Authorship" is one of the three elements (along with use/intention to use and applying for registration) that determines "ownership" and so the right to registration under Australian trade mark law.  This was not considered by the EUIPO.  "Authorship" in trade mark law is not the same as authorship in copyright law. 

For trade mark purposes, the trade mark does not need to be new and original but it can be, as in the case of a new logo.  Authorship in the trade mark context is more akin to the idea or concept of applying a sign to goods or services to show their trade origin.  An example might be the word "giraffe" applied to swimming pool chemicals.  In many cases where copyright subsists in a logo trade mark, the 'author' of the copyright and its owner might not be the applicant but the applicant for registration is still legitimately the owner of the mark for registration purposes. 

One of the most interesting issues that may very well arise in the Australian context, but which did not strictly arise in the EUIPO decisions, is whether PCO can assert the requisite level of ownership to entitle it to registration of the trade marks in Australia in circumstances where Banksy is responsible for the designs under application. A challenge to ownership can arise in a number of ways including, for example, where there is reason to believe that the applicant is not the "author" of the marks.

Each of Banky's opposed applications carries the following endorsement.  "BANKSY has consented to the use of their artwork as a trade mark". Strictly this or some variant endorsement is probably not a misrepresentation.  It's hard to see how such an endorsement calls into question PCO's right to registration based on trade mark "authorship" even if the author of the copyright work wanted to keep "their" identity secret.

It remains to be seen how PCO will assert the legal underpinnings of the endorsement (if at all) without having to marshal evidence of an assignment or authorisation from Banksy.

Key takeaways for trade mark owners

While Banksy's anonymity is a factor unique to "their" legal strategy, the case is a reminder to businesses not only of the differences in law that might arise in prosecuting a brand portfolio internationally, but also of the challenging issues that might arise even in an Australian context and which may need to be navigated to secure trade mark registration. 

It is important to consider very carefully the future use of any trade mark (sign) or copyright work and who is legally entitled to registration because, to ensure validity, this person must be the applicant for registration.

Next edition: What then is bad faith and how can it be made out in Australia?