A recent decision around a trade mark application from the street-artist Banksy highlights the importance of usage and filing in good faith for trade mark applications.
What is a Trade Mark?
Trademarks act as a “badge of origin”, enabling consumers to identify the commercial source from which goods and services come from. They distinguish the goods and services of one business from those of other businesses within the same industry. This has the effect of minimising confusion and protecting the consumer from counterfeit or deceptive offerings from third parties.
It is a basic principle of trade marks that a connection exists between a trader and the goods and services they provide, and that there is no such connection if the mark is not used. To remain valid, trade marks must therefore be used in the course of trade in relation to the goods and services specified in the scope of the right.
In New Zealand, a continuous period of non-use of three years or more may be accepted as grounds for revocation of a registered trade mark.
Good Faith Requirement
Trade mark registration can also be refused or invalidated if the application was made in bad faith. In this context, bad faith relates to having unfair intentions when filing the application, and may include:
- Using the trade mark for purposes other than the intended function of a trade mark to act as an indicator as to the origin of goods or services
- The scope of protection having the effect of introducing unfair competition in the market
- Prior knowledge of an identical or similar third-party mark, that your mark may be confused with
There has to be a genuine intention to use the trade mark appropriately at the time of making of the application.
Banksy Case and EUIPO Decision
“Flower Thrower” is one of Banksy’s most recognisable works. Depicting a masked man in the act of throwing a bunch of flowers, it first appeared in 2003, and has been used and reproduced, as has much of his art, in a variety of settings. In 2014, Banksy’s representatives made a successful application to trade mark the Flower Thrower in the European Union.
In 2019, a greeting’s card company, Full Colour Black, which often uses Banksy’s artworks on their products, started an invalidity action against the mark, on the grounds that the registered image had never been intended to be used as a trade mark in the first place. Later that year, Banksy created an online gift shop and shop front, Gross Domestic Product, in an attempt to comply with EU trade mark law by showing use of the contested mark.
Earlier this month (September 2020), the European Union Intellectual Property Office (EUIPO) Cancellation Division ruled against Banksy and that the trade mark should be declared invalid. They found that, at the time of filing his application, he had no intention to use the mark as a trade mark for the commercialisation of goods or services, and that his shop had only been set up in response to the invalidity action.
They also found that the trade mark application had been made to avoid using copyright laws to protect his works. Enforcing a breach of copyright would require Banksy to reveal his true identity, whereas trade marks can be owned and enforced through a third-party representative.
Trade marks are an important, well defined, and valuable form of intellectual property, with clear differences from other types of IP right such as copyright, patents, designs, geographical indications etc. A registered brand is a valuable business asset that indicates the origin and quality of the goods and services a business provides.
This decision highlights the importance for any business, big or small, to protect, manage and enforce their intellectual property appropriately.
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