EUIPO rejects trademark registration with model’s image and raises debate about the distinctiveness of faces as trademarks

EUIPO rejects trademark registration with model’s image and raises debate about the distinctiveness of faces as trademarks

Recently, the European Union Intellectual Property Office (EUIPO) rejected an application to register a figurative trademark consisting of the image of the face of Dutch model Puck Schrover. The decision was based on the trademark’s lack of distinctiveness.

The application was made for mannequin and model services for advertising and sales promotion purposes (NCL(11) 35), and for services comprising models for recreational and leisure activities (NCL(11)41).

In rejecting the application, the EUIPO Examining Division held that the uniqueness of the portrait was not enough to confer distinctiveness on the mark as a whole. The image, despite depicting a person with a unique appearance, was considered to be a representation that could be used generically in the presentation of these services. Even considering the model’s notoriety and her presence in fashion magazines and events, these factors would not be sufficient to associate her image with the brand’s services, based on the perception of the relevant consumer (in this case, the ordinary one).

The applicant claimed that the model had international recognition and therefore the trademark had acquired secondary distinctiveness through use. However, EUIPO concluded that the model’s image was not perceived by the relevant public as an indication of commercial origin.

This is not the first time that EUIPO has come across trademark applications with these characteristics. In 2020, model Maartje Verhoef was granted registration – on appeal – of a figurative trademark consisting of the image of her face. Other registrations of a similar nature have been granted by the European office – such as the trademark registrations with the faces of models Yasmin Wijnaldum and Rozanne Verduin – on the grounds that the photographic representation of a person can be perceived by the public as an identifier of the origin of goods and services.

From the grounds of recent decisions on trademark applications of this nature, it can be seen that faces or their characteristic parts can be protected as trademarks but proving trademark distinctiveness (inherent or secondary) can be a challenge.

The decision (only available in Dutch) can be accessed via the link: https://euipo.europa.eu/copla/trademark/data/018864324/download/CLW/RFS/2023/NL/20230915_018864324.pdf?app=caselaw&casenum=018864324&trTypeDoc=NA

More information on the case can be found in the articles listed here: https://ipkitten.blogspot.com/2023/10/distinctiveness-and-human-faces-can-you.html  and https://germainmaureau.com/en/2023/10/faces-as-trademarks-distinctive-character-with-variable-geometry/

Note: For quick release and cost control, this English version is provided by automated translation without human review.