Fashion brand Guess recently launched a range of clothes featuring images by Banksy such as the “Flower Thrower”, but allegedly without his authorisation.  In retaliation, on his Instagram page the graffiti artist encouraged his fans to steal the clothes: “They’ve helped themselves to my artwork without asking, how can it be wrong for you to do the same to their clothes?”

That might appear ironic considering that Banksy said in his best-selling 2005 book of art prints Wall and Piece that “Copyright is for losers.” and that people should “copy, borrow, steal and amend” his artwork.

Whether Guess was aware that Banksy had not properly given his permission (if his claim was indeed true) or not, the artist will struggle to enforce his intellectual property rights largely because of his anonymity.

Anonymity is recognised by the Berne Convention: according to Article 7(3) original artistic works created by somebody who wishes to stay anonymous still generate copyright. However, enforcement is more complex and many jurisdictions require that the creator reveal his or her identity to prove who the author is in the first place.

That might be why in 2018 and 2019 Banksy (via Pest Control Office Limited, an organisation acting on his behalf) applied to register as an EU trade mark many of his most iconic images, such as the Flower Thrower (EUTM No. 12575155) and the monkey wearing a sandwich board (No. 17981629). Both of them were declared invalid by the EUIPO’s Cancellation Division on the ground that they had been filed in bad faith under Art 59(1)(b) EUTMR as they had been no genuine intention to use them, those applications having been made purely to bypass the limitations of copyright regarding anonymity. Banksy’s 2005 statement was quoted as evidence.

However, the EUIPO’s Fifth Board of Appeal recently annulled the decision of the Cancellation Division regarding EUTM No. 17981629 (in case R-1246/2021-5). It dismissed the earlier finding of bad faith on the following grounds:

• The artwork having been deliberately made publicly available beforehand did not necessarily mean that there had been no intention to use it as a trade mark;
• Banksy’s earlier criticism of copyright was irrelevant: it was his fundamental right to express his opinion under Article 19 of the Universal Declaration of Human Rights, and this was in any case insufficient evidence of bad faith from his part; and
• The cancellation action had been launched within a year after the grant of registration: Banksy still had until June 2024 to start genuine use of the sign. Indeed, the registration could still be revoked for lack of genuine use after that date.

Unless an appeal is submitted, Banksy will therefore keep his EUTM as well as the corresponding UKTM No. UK00917981629 – at least until June 2024.

Presumably, the legal team of Guess has already made sure that it has not used the relevant image or any other whose registration status is still open.

Copyright and trade marks follow very different sets of rules but the above saga demonstrates that they might work hand in hand subject to the appropriate legal advice.  It might be too late to obtain registration of the images featured on this (temporary by all accounts) clothing range, but the above decision might give Banksy the motivation to seek (again) registration for all his work to prevent this situation from happening again. However, that would then amount to him claiming authorship to all the work he produces, thus removing some of the mystery that always surrounds every appearance of work in his style anywhere in the world.

In the meantime, please don’t shoplift!

If you have any questions regarding copyright or trade mark protection, please contact one of our attorneys.