What Can Banksy Teach Us About Trade Marks

Urban art has matured over the last few decades, from landscape defacing tags and graffiti to witty and loved street & urban art.  Banksy is one example of modern-day, celebrated street artist.  Over the last 30 years, he has gone from being called “a vandal” by New York Mayor, Michael Bloomberg, to seeing his artworks sell in the millions of dollars.

Banksy clearly knows a thing or two about brand.  He uses mystery & spectacle like no other.  He has staged many public stunts, such as his lampooning “Dismaland” theme park in England, to his self-destroying “Girl with Balloon” painting – sold at auction for nearly $AUD2M, it shredded itself in full public view before its new owners could take it home. He has managed all this, including making more and more public artworks while keeping his identity unknown (which is no mean feat in this day and age).

Banksy’s brand is the envy of many, but his trade marks are not

Trade marks are powerful business tools when used properly.  They are used by organisations as a badge of origin for their products and services. However, their real purpose is to make sure there is no confusion by the buying public as to where their purchase has come from. This is why, for trade marks to work properly, they need to be distinctive, not descriptive. A trade mark owner has a legal right to stop unauthorised use of their trade marks by a third party selling the same or similar goods or services. Most of the time trade marks will be words, but they can also be colours, smells, shapes, and … graphic representations (like logos)… which brings us back to Banksy.

Use it or lose it

In an attempt to stop his art being reproduced on t-shirts and birthday cards, Banksy registered several of his artworks as trade marks. But this has not exactly gone to plan.

One of the main issues with his trade mark registrations is their use by Banksy.  And here is the important bit … to keep your trade mark registered, you must use it as a trade mark for the goods or services with which it is registered.  Banksy registered several of his art works as trade marks for selling art supplies, clothing, books, music, carpets, education and training services, and many more things.  The problem is, he (and his company “Pest Control Office Limited”, the owners of the trade marks) were not using any of these trade marks as trade marks for any of the goods or services for which they were registered – he has never sold any t-shirts, rugs or birthday cards with his artworks on them.  In fact, one might argue regardless of where he has used his artworks, he has never used them “as trade marks”. He has only used them as a form of artistic expression, not a badge of origin for goods to be sold.

Unfortunately for Banksy, the European Union Intellectual Property Office thought so too. Despite being registered as trade marks, when greeting card company “Full Colour Black” applied for Banksy’s registrations to be invalidated on grounds of “bad faith” (for lack of use as a trade mark), they were successful and several of the registrations have been or are being removed.

Stick to your knitting

To save yourself both time and money, don’t get too greedy and attempt to register a trade mark you have no intention of using, or for goods or services for which you have no intention of selling. Likewise, don’t try and use a trade mark as a way to protect something that can’t be protected or should have been protected using a different intangible asset (a mistake we see many companies making)

Instead, if you want to ensure your trade marks are valid and that you will be able to enforce your rights if someone infringes your trade mark, then make sure the trade marks you are registering will be used for the goods and/or services for which they are registered and in the country where they are registered.  What is meant by “use as a trade mark” will typically mean being on related goods (eg on labels), in advertising, on collateral or even invoices.