Can someone’s face be a trade mark?

The trade mark that
Maartje Verhoef sought to register

In a world in which the legal tools available to protect one’s own likeness and persona vary significantly – with some countries, e.g., providing for strong image rights protection [see the case of Italy here, here and here] and others not even acknowledging the very existence of self-standing image rights [that is the case of the UK: here] – the question posed in the title of this post is an intriguing one. 

The same can be said of situations in which other forms of protection – for example copyright in a fictional character – might be uncertain (again in the UK, the first decision expressly acknowledging such a possibility was only issued earlier this year) or might have lapsed due to the expiry of the relevant term (in this sense, you can read this recently published article on The New York Times discussing the IP protection of Mickey Mouse and also considering the trade mark registrations for the famous rodent).

Over time, the EUIPO has reviewed a number of applications for figurative marks representing in effect one’s own likeness. 

For example, in 2017 the Fourth Board of Appeal had to decide whether model Maartje Verhoef’s trade mark application for a sign depicting her face could be granted in respect of a variety of goods and services in classes 3, 9, 14, 16, 18, 25, 35, 41, 42, and 44. The EUIPO Examiner had refused to register the trade mark applied for on the basis of Article 7(1)(b) and (c) EUTMR, finding it partially descriptive and devoid of distinctive character. In its decision (R 2063/2016-4), the Fourth Board of Appeal reasoned that the sign applied for did not consist of “a banal representation of people in general”, but rather “a specific individual, with her unique facial features”, with the result that the image at issue “does in fact enable the public to distinguish the goods and services concerned from those with a different commercial origin, and in particular from the specific person depicted”. As a result, the Board annulled the Examiner’s decision.

Trade marks for figurative signs representing how historical figures might have looked like

The Verhoef case is interesting also because it relates to an actual, living person. 

But can the same conclusions be drawn when the trade mark applied for consists of a computerized representation of the supposed image of a well-known historical figure, for whom no photos were ever taken? To be clearer: if, based on the available representations of Nefertiti – including her stunning Bust held at Berlin’s Neues Museum – one is able to conclude that she might have actually looked like this:

could that sign be registered as a trade mark?

Last week, the EUIPO Examination Division answered this very question in a series of decisions relating to the following applications, all concerning several goods and services in classes 9, 35, and 41 (thanks to Jérôme Tassi for sharing news of these cases on his LinkedIn feed):

• 018603544 (here)
• 018603569 (here)
• 018585906 (here)
• 018585924 (here)
• 018585908 (here)
• 018585947 (here)
• 018585895 (here)
• 018585913 (here)
• 018585953 (here)
• 018585910 (here)
• 018585940 (here)
• 018603571 (here)
• 018603546 (here)
• 018603568 (here)
• 018603551 (here)
• 018585935 (here)
• 018585956 (here)

The EUIPO Examination Division rejected the applications above in relation to some of the services claimed in classes 35 and 41 due to lack of distinctive character, with a common reasoning that can be summarized as follows:

• While it may be more difficult to determine the distinctive character of a sign consisting of a photograph that depicts a person, that does not mean that registration of such signs is altogether precluded;
• The relevant public across the EU will have the same perception of the inherent distinctiveness of the trade marks applied for, given that linguistic differences would not play any role in the present situation;
• The assessment of distinctiveness needs to be undertaken having regard to the relevant goods and services. For example, if the portrayed person was a famous person – whether actor, singer, or historical figure – such a sign in connection with, e.g., books, cultural activities and museums, or auctions would not be inherently distinctive because the average consumer would understand it as referring to the subject thereof, and not as an indicator of commercial origin;

• 

  Does a a mugshot
  warrant the making of
  'free and creative choices'?
  
  

  While it is true, according to the Office, that every face is unique, a person’s portrait must have gained recognition – the Office speaks of ‘fame’ – in order to be considered as an indicator of commercial origin. In all this, it is to be borne in mind that the likeness of a famous person may be indeed used as the subject of goods and services (as per the above), rather than as their indicator of commercial origin (the Office referred to the 2008 decision of the German Federal Court of Justice in Marlene Dietrich). Moreover and in any event, recognizing a person as ‘that’ person does not equal considering the image at issue as a trade mark.

Comment

Whether a figurative sign consisting of a person’s portrait is protectable by intellectual property is a thought-provoking question.

From a copyright perspective, surely that image is a ‘work’, but could it be also regarded as original enough to warrant protection under that IP right (without considering related rights in accordance with Article 6 of the Term Directive)? 

I think that a distinction needs to be drawn between different types of portraits.

In Painer, the Court of Justice of the European Union (CJEU) expressly acknowledged that a portrait photograph can be indeed protected by copyright, provided that the author has made free and creative choices and the resulting work bears their personal touch.

But can the same be concluded when it comes to a computerized image of how a historical figure - for whom no photos do exist -  might have looked like? 

And what about
a passport photograph?

Leaving issues relating to the use of artificial intelligence aside, in such a situation the choices made in realizing that image were possibly not really free and creative, but were rather dictated by technical choices, rules, and considerations – the end goal being to create a representation of a real person that would be as close as possible to how they actually looked like. In this sense, the artist’s own interpretation of one’s own image, which could be appreciated in – say – a portrait painting or photograph would not be really present. 

In a situation like that, the closest term of comparison would be a passport photograph or a mugshot (one of my favourite points of discussion with students when dealing with originality is indeed about copyright protection of mugshots like this), not artistic portraits.

Hence, if one were to apply the CJEU-mandated standard – rather than a ‘skill, labour, and effort’ approach (which could offer arguments in favour of protection, based on old cases like Sawkins) a copyright claim could be difficult to sustain successfully for 'photographs' of historical figures: the most recent instalments in the CJEU construction of originality – Cofemel and Brompton [IPKat here] – suggest an answer in the negative [see also here for my recap and discussion of CJEU case law on the basic requirements for copyright protection].

Turning to trade mark law, the recent EUIPO decisions discussed here remind us that the assessment is not to be conducted in abstracto, but rather having regard to the relevant goods and services. 

One key question mark remains unanswered in all this though. The Office tells us that not the representation of any person, but only of a famous person, could be perceived as a trade mark. But, again, if the public is taken to be that of the EU, what level of fame is actually required and across what territories? The threshold that the EUIPO has set in this recent string of decisions seems to be quite a high one to pass.