9 October 2019

How Banksy attempts to prevent its trademark registrations from going through the shredder.

The artist Banksy has opened a shop in the United Kingdom. The doors of this shop will never actually open, but shortly Banksy will start selling merchandised products via a web shop in order to protect his brand better. The direct cause for this is that a British company is trying to invoke the expiry of the Banksy trademark registration. What is precisely the matter?

Banksy has a company called Pest Control Solutions Limited. This company does not sell any supplies for protecting agricultural products, but is occupied with the verification and sale of artwork by the secretive artist. This company holds several European trademark registrations for BANKSY. These registrations cover various products and services, such as paint, paintings, sunglasses, handbags, clothing and services in the area of art.

The artist is immensely popular and therefore, it is no wonder that third parties try to profit from his success by selling products with the name Banksy. Banksy naturally wants to act against this and therefore, it is logical that he has registered his name as a European trademark for various types of products.

However, one of his registrations is more than five years old. This means that this registration is subject to the use requirement. In other words, Banksy can only invoke this registration against third parties, if he actually uses this mark for the goods and services covered by the registration. There must be evidence of ‘genuine use' and to be able to show genuine use, you must be able to show that over the past five years you have created or retained a market share in the European Union for the goods and services concerned. Token use is excluded.

However, the point is that up until now, Banksy only created works of art and has not sold or hardly sold merchandised products under the brand BANKSY. Therefore, it is quite doubtful whether he can invoke his trademark registration. Moreover:  with regard to the major share of his goods and services – for which his trademark is registered – most likely, he is momentarily not in a position to invoke his trademark registration against third parties due to a lack of genuine use. By starting to sell merchandising under the BANKSY brand, he probably hopes to comply once again with the use requirement, so he will be better equipped to act against potential infringers. In that case, there is evidence of remedy. This means that trademark rights are actually revived, because you are using the mark once again. Therefore, Banksy hopes to be able to act more effectively against third parties by complying again with the use requirement. As said, token use is not enough and Banksy will therefore need to produce on a considerably large scale in order to prevent its trademark registrations from going through the shredder. In contrast to his paintings, this does not increase the value of his trademark registrations.