Distinctiveness and human faces: can you register a face? Perhaps, but not so easily

In a recent decision (only available in Dutch), the EUIPO Examination Division rejected an application for EU trade mark (EUTM) registration concerning a figurative mark that depicted Dutch model Puck Schrover (see below). In particular, the EUIPO Examination Division considered that the applicant failed to demonstrate that the mark had distinctive character and/or acquired distinctiveness through use, pursuant to Articles 7(1)(b) and 7(3) of Regulation 2017/1001 (EUTMR).

The decision highlights the difficulty for trade mark applicants to demonstrate distinctiveness of marks that comprise of human faces/portraits [for a recent discussion on The IPKat, see here]. However, the EUIPO Examination Division did not entirely exclude the possibility for applicants to register such marks: what is fundamental is that the face being depicted in the mark has dominant or distinctive features (e.g., as the EUIPO itself noted, Barbra Streisand’s nose or Donald Trump’s hair). Therefore, a mark can theoretically comprise of a human face/portrait, but it must have clear dominant and distinctive features to qualify for registration.

Background

PS Holding BV (the Applicant) filed an application for EUTM registration of the below figurative mark:

The application concerned services in Classes 35 (mannequins and photo models for advertising or sales promotion) and 41 (models and mannequins for recreational or leisure purposes) of the Nice Classification.

The Examination Division’s findings

1. Lack of distinctive character

The EUIPO Examination Division considered that the Applicant’s mark could not be separated from the services covered by the trade mark application in light of the attentiveness of consumers and the fact that specific features of the mark were commonplace. In particular, the mark consisted of nothing more than an image that could be used for the presentation of the services (services of models and photos of models). While a passport photo of a person’s face is a unique representation, this alone is not sufficient to grant distinctive character to the mark in its entirety.

Furthermore, the unique nature of portrait would not change the above findings, since it could be a photographic representation of any (young) woman. Nor did the background and colours in the portrait add anything remarkable. Importantly, there was neither feature nor memorable or striking element that could impart any minimum level of distinctiveness to allow the consumer to perceive it as anything other than a mere appearance.

2. Distinctiveness through use

The Applicant also claimed that the mark enjoyed international recognition and had built up significant popularity and reputation and had therefore acquired distinctiveness through use, pursuant to Article 7(3) EUTMR.

According to the EUIPO Examination Division, insofar as the Applicant claimed that the mark represented an image of the internationally renowned commercial model Puck Schrover (known for, amongst others, her work for well-known fashion houses such as Chanel, Dior, Louis Vuitton), it did not justify the conclusion that the relevant public would perceive her image as an indication of commercial origin of the services in question.

Additionally, the fact that Puck Schrover appeared in international fashion magazines and walked fashion shows did not indicate anything about the recognition and reputation as a trade mark, and even less about the perception of the image in relation to the claimed services. Therefore, in view of above, even if it were demonstrated that a significant portion of the relevant public identified Puck Schrover based on the photos in various magazines and at fashion shows, the Applicant still failed to provide adequate evidence showing that the public recognized the desired mark as a distinctive sign for the services in question.

Comment

This decision confirms the challenges of registering faces as trade marks. While in the past the EUIPO granted registration of a trade mark application for a sign depicting the face of model Maartje Verhoef in relation to goods and services in classes 3, 9, 14, 16, 18, 25, 35, 41, 42, and 44, one should not think that registration of these types of signs is going to be a walk in the park. The assessment of distinctiveness in relation to the specified goods and services is indeed likely to represent a substantial obstacle to overcome successfully, in that consumers may be taken as regarding the sign in question as a mere promotional image offered in relation to the relevant goods and services at issue.