BANKSY'S TRADEMARK SCRUBBED OFF THE REGISTER

Popular graffiti artist Banksy recently suffered the ignominy of having his registered trademark cancelled in the EU. In a David vs Goliath showdown, greeting card company, Full Colour Black, managed to cancel a trademark registered by Pest Control Office Limited, an entity which holds the reclusive artist’s trademarks.

While trademark cancellations are not uncommon occurrences, what is interesting to note is that the trademark happened to be the famous stencil and spray paint mural, ‘Rage, Flower Thrower’.

Rage, flower thrower, 2005 painted on a wall in Palestine, Jerusalem

Wait, trademark protection for wall paintings?! Those familiar with intellectual property rights protection would be quick to point out that copyright protection rather than trademark registration would be more appropriate to protect artistic works.

However, there is a method in this madness. When it comes to the enforcement of one’s copyright, one can’t do so behind the veil of anonymity as the author of the copyright work must be identified. On the other hand, any distinctive image can be registered by any person as a trademark. Considering the artist’s well-known proclivity for anonymity, registering his artwork as a trademark would seemingly appear to be a masterstroke worthy of applause as he can still prohibit any unauthorised use of his trademark protected artwork through a special purpose vehicle, hence, retaining his anonymity.

The Achilles heel in this seemingly well thought out plan is that a trademark registration can be cancelled if there is no intention to use it in good faith. And this lack of honest use was exactly what Full Colour Black relied on to apply for a cancellation of the trademark at the EU IP Office. Attempting to remedy the oversight, the mysterious artist set up a storefront in London to sell his artwork in an attempt to meet the trademark use requirement to prevent the cancellation of his trademark. In a classic case of ‘too little, too late’, this token, after-the-event usage of the trademark was not enough to prevent the cancellation of his registration as the IP Office took the view that the artist had not used the trademark in good faith. It didn’t help that the artist had shot himself in the foot by publicly announcing that the storefront and sale were merely an attempt to stave off the cancellation attempt.

While it may appear that a great injustice has been committed against the art world, or at least, an artist, the EUIPO’s decision is correct because the primary function of a trade mark is to serve as a sign to enable members of a public to identify the maker of goods or provider of service based on that sign and trademark registration is to grant owners the right to exclusive use of that trademark. To register a trademark with no intention to use it and to deny others the ability to use that trademark is considered an act done in bad faith.

Do you make artsy stuff and/or sell them on e-commerce sites? Unsure about which IPR protection to get? Why not drop us a holler? After all, we’re here to help!

Start-up Assistance

The past couple of months have shown us the importance togetherness.

This Merdeka month, let our Wawasan 2020 be one of unity! Let's make Malaysia greater by working hand in hand! After all, a threefold cord is not quickly broken.

So, to do our part, we are taking 50% off our trademark registration fee for the first 5 Malaysian Startups to email us with the code "2gedergeder". With the discount, registering your trademark is now as low as RM 1,320!

Terms and Conditions: This offer is available to Malaysian Startups only (<3 years). It is not inclusive of official fees payable to the IP office. And we reserve the rights to modify, suspend, or terminate the offer without prior notice. Offer ends 16 September 2020.

#merdeka#standtogethermy#brandprotection#brand#trademark#startups#gordianstartupassist

Trademark 101

1. What is Trademark?

Commonly known as a brand (yes and no, we’ll get into that later). A trademark is an indication of origin - a sign that points you to the maker of a product or the provider of a service. The sign can be lots of things (e.g. words, logos, shapes, sounds, scents, etc.), as long as the consumers can tell who is responsible for the products or services, it can be a trademark. Common examples includes :-

2. Is a Trademark a Brand?

Trademarks are brands, but not all brands are trademarks. A brand is anything that a consumer recognises as being part of the identity of a business, e.g. - interior design (the interior design of McDonald’s is virtually the same everywhere in the world), the way things are done (the phrase “Welcome to Uniqlo” chanted and echoed by the shop assistants as you enter), or colours/styles of products (e.g. Muji Style). Trademark (at least in the legal sense) is a narrower concept. Only brands that are capable of being represented on paper can be considered as trademarks. Therefore, if a brand can be written or printed on a piece of paper, chances are it is also a trademark.

Still confused? See if this venn-diagram helps:-

3. How can I protect my Trademark?

The most common (usually also the most effective) way of protecting a trademark is through registration. Registration is an official recognition of your ownership of your trademark (much like a business registration certificate, title deed, etc.). With this official recognition, you can enforce your exclusive rights to use the trademark either in court or with the help of other official bodies (e.g. customs, police etc.).

Aside from registration, there are other ways of protecting your trademark by relying on other areas of the law e.g. contract law, the tort of passing-off, copyright, anti-trust, anti-competition, etc.

4. If I register my Trademark locally will I get protection internationally?

Usually no. Trademark Rights are territorial. If you register in country A, you get trademark protection only in country A and nowhere else. There are a few regional registrations available e.g. an EUTM registration which covers the whole of the EU, ARIPO registration in the mostly English-speaking countries of Africa, OAPI registration in the mostly French-speaking countries of Africa.

5. What about the International Registration or the Madrid System?

The International Registration or Madrid System makes it easier for you to register your trademark in over 120 countries. For example, you have applied to register your trademark in Malaysia, and you now would like to do the same in the US, EU, China, Australia, and Japan. Via the Madrid system, all you need is to make one application designating the aforesaid countries, wait for the individual trademark bodies there to give you the greenlight, and after which, you’ll have your International Registration. This can be a simpler and cost-effective way to extend your trademark registration worldwide. And what’s more, you can transfer or renew your International Registration by submitting just one application, instead of having to repeat the same process in all 5 countries.

6. Can I register just about anything as a Trademark?

As we’ve mentioned above, if your brand is capable of being represented on a piece of paper, chances are they can be a trademark. However, whether you can register that trademark is another matter. A trademark may not be registered if:-

(i) it is generic;

(ii) it is offensive/illegal/obscene; and

(iii) someone else has already used/filed/registered it.

7. Why can’t I register a generic/descriptive sign?

Generally, you can’t register a generic/descriptive word, logo, symbol, or design as a trademark. The reason is simple. Registration gives you exclusive right (monopoly) to use the trademark, and if you are allowed to register a generic/descriptive sign, no one else can use it! Imagine if I register the word “restaurant” as a trademark for restaurant services, no one can use that word to describe their f&b outlet without infringing my trademark rights. Accordingly, the more generic/descriptive a trademark, the harder it is to register.

Useful tip: In general, if a sign is needed by your competitors to describe or represent their products/services, it is probably generic/descriptive, and you can’t have it registered as a trademark.

8. How long does my registration last?

Usually 10 years, but you can renew the registration for as long as you are still using the trademark. One of the oldest registered trademark is 144 years old and it’s still going strong. See below:-

Trademark No. 1 in the UK’s Trademark Register (filed on 1 January 1876)

9. TM or R ?

You can’t use the R symbol unless your trademark is registered. The TM symbol stands for “Trademark” and is used to notify the public that a sign is used as such. Sometimes, you’ll see the SM symbol, which stands for “Service Mark”, and it means a trademark is used in relation to a service instead of a product. The use of either of these three symbols is not legally required and serves no purpose other than as a notice/reminder.

Got a question about your brand or trademark? Why not give us a holler?