By Pranit Biswas and Bhanu Dhingra
One of the core tenets and the perhaps the very raison d’etre of trademarks, is to provide consumers a method to be able to choose their favorite brand over others. Logically speaking, as long as the consumer is able to point out the commodity they would like, a trademark exists. However, that logic falls flat on the fact of other legal principles and developments.
Agatha Christie is famous for her ‘Hercule Poirot’ series of books, and has her name trademarked under the Agatha Christie Foundation. However, the popular name of her book “And Then There Were None” was initially rejected as a trademark. As long as a consumer can associate her with the book, and Agatha Christie is the name that comes to mind when the trademark is used, such that usage by anyone else would be confusing, a case for trademark can be made. Applying this logic, the trademark was granted. However, Christie’s name is publicly known and widely renowned.
Banksy, a (allegedly) British anonymous artist has now lost two bids for trademark registration in the UK. Banksy is the pseudonym behind which an anonymous artist has created several world famous and widely appreciated artworks. Although Banksy successfully obtained a trademark in 2014, Full Colour Black (a company specializing in making greeting cards) brought a cancellation action claiming that Banksy wasn’t using the mark in a “genuine” manner. As a response, Banksy set up a homeware shop (Gross Domestic Product), which operated virtually to use the trademark in a “commercial” manner. His mark was cancelled nevertheless. The court opined that a trademark belongs to a business, and it should be used in commercial fashion. Using a mark as a defense against potential future infringements is not the purpose with which the intellectual property was set up. The basic economic justification for trademark protection—to lower consumers’ search costs—means that a trademark’s value is based on its commercial value.
In fact, Banksy’s own public disdain for the intellectual property came to haunt him (them), as the Court in their decision of cancellation, rather ironically stated that “By their own words, they admit that the use made of the sign was not genuine trademark use in order to create or maintain a share of the market by commercialising goods, but only to circumvent the law.”. Interestingly, the Court also noted the main conundrum, which is the subject matter of this article, the issue of anonymity – “Banksy has chosen to remain anonymous and for the most part to paint graffiti on other people’s property without their permission rather than to paint it on canvases or his own property. He has also chosen to be very vocal regarding his disdain for intellectual property rights, although clearly his aversion for intellectual property rights does not annul any validly acquired rights to copyright or trademarks. It must be pointed out that another factor worthy of consideration is that he cannot be identified as the unquestionable owner of such works as his identity is hidden.” Therein lies the crux of the problem vis-à-vis intellectual property law – ownership.
Whether Banksy’s anonymity was the major factor in the denial of the trademark, or whether it was the absence of a commercial business associated with the trademark, the main takeaway in this issue was that both factors in conjunction are a death kneel to Banksy’s IP portfolio. Although Christie and Banksy are in different jurisdictions, the weight given to an Applicant’s identity was significant in both cases.
Global Perspective – Looking at the USA as a point of reference vis-à-vis anonymity
In the United States, a trademark can be anonymous, but the individual would have to register and jump through a few hoops while doing that. An individual, corporation, partnership, Limited Liability Company, or any other legal entity can be the owner of a trademark. An Anonymous LLC, which is essentially a corporation whose owners are not publicly recorded in state records, can be formed to protect an individual’s identity.
However, applications for trademarks in India necessarily require a name and address to associate the trademark to. That said, one can nevertheless provide a fake name and address in an intent-to-use application in India and try to preserve their anonymity to some degree!
However, there are no decisions yet in India, on the position of ‘anonymous trademarks’ in India.
The primary purpose of a trademark, is to ensure that a consumer does not get confused and the reason for being of a trademark is to serve as an effective indicator of origin. However, in cases like that one of Banksy, logically the ‘identity’ of Banksy would play a great part and one may not be able to anonymously register the likeness of a Banksy artwork as a trademark in many IP offices and objections may be raised, which the artist may not be able to overcome without resorting to associating his name and reputation with the trademark! It is indeed a proposition, which raises more questions than answers!