How distinctive are faces?

There are three things I always forget. Names, faces and... the third I can't remember.

This quote from the Italian writer Italo Svevo could have been the motto of the EUIPO when it rejected the trade mark applications for real-life pictures of the faces of Dutch models Puck Schrover (see here) and Maartje Verhoef (see here; registered eventually). It also ‘swiped left’ on two similar trade mark applications depicting Dutch models Marlijn Hoek and Roos Abels but the Board of Appeal (‘BoA’) of EUIPO revisited the pictures and ‘swiped right’.

Background

On 17 October 2017, M & R Holding B.V. applied for EU trade mark no. 017355066 for the following sign:

On 26 October 2017, Roos Abels Holding B.V. applied for EU trade mark no. 017393125 for the following sign:

Both applications covered ‘services of mannequins and photo models for publicity or sales promotion’ in class 35 and ‘model and mannequin services for leisure or recreational purposes’ in class 41.

The examiner rejected the applications for lacking distinctiveness (Art. 7(1)(b) EUTMR). He argued that the marks applied for only represent the mannequin or photo model and the images can be used for promoting the services in question. Real-life pictures of a person's face may be unique but uniqueness and distinctiveness are two different concepts. While each face is unique, it does not mean that it is immediately perceived as an indication of the commercial origin of the services. It is not unusual for mannequin and model services to be offered with an image of the person providing them.

The applicants appealed.

The Board of Appeal’s decisions

The fourth Board of Appeal upheld the appeals. The reasoning is identical in both decisions (R1255/2023-4 and R1266/2023-4) .

The Board noted that trade marks must guarantee the origin of the goods or services to the consumer. A trade mark must be able to identify the goods or services as originating from a particular undertaking, and thus to distinguish these goods or services from those of other undertakings. While the criteria for assessing the distinctive character of different categories of marks are the same, the perception of the relevant public is not necessarily the same for each of those categories, and it may be more difficult to establish the distinctive character for certain categories.

The BoA confirmed the examiner’s finding that the services are directed at the general and a specialised public.

It disagreed, however, with his further findings. The BoA saw no reason for holding that it is more difficult to establish the distinctive character of a person’s photograph. The marks show the faces of specific persons with their unique facial features and characteristics. Faces, like first names and surnames, identify a person and therefore distinguish them from other persons. It is irrelevant whether the person is known by name. The existence of identical twins is disregarded as an exceptional case.

The BoA was not convinced of the examiner’s argument that the signs were non-distinctive because they would only be perceived as representations of the persons who provide the mannequin and model services. Instead, the signs are found to be distinctive precisely because they identify the persons who provide the services. The faces literally indicate the commercial origin of the mannequin and model services.

Comment

The finding of the BoA that the general public forms a part of the relevant public would have required some explanations. Do end-consumers have the need for mannequin or model services? This can be a decisive question because consumers might perceive the picture of a face differently than professionals.

As regards end-consumers, it can be argued that real-life photographs of people are usually not used as indications of origin. This is especially true for pictures in the style of those applied for, i.e. a frontal view of a rather expressionless face against a neutral background.

Of course, celebrities show their faces (and bodies) to endorse perfumes, watches, clothes and other consumer products. However, they are merely a means to promote the goods but do not indicate the commercial origin. Neither Chris Hemsworth nor his face become an indication of the commercial origin of Hugo Boss suits and perfumes merely because he appears in their advertising. Nobody would believe that he produced these goods or was in any other way responsible for them.

Absent particular findings to the contrary, should the same apply to faces used for mannequin and model services? If you saw the picture of one of the models on the store front or the website of a company offering mannequin and model services without any (other) indication of origin like word marks, would you consider the picture to be an indication of the commercial origin? Or would you just understand it as a reference to the person providing the services (without necessarily being responsible)? Or even both? What specific features do the trade marks possess for the public to make it believe that these models are responsible for the services (i.e. as their source) and not just the people performing the services?

Even if the faces can be understood as both descriptive and an indication of origin, would this be a ‘Doublemint’ situation (CJEU, case C-191/01 P)? According to settled case law, a sign with several meanings is descriptive (and non-distinctive) if one of its meanings is descriptive even if the other meanings would be distinctive.

A decision from the General Court or the CJEU would be helpful to clarify the conditions for protection for these non-traditional trade marks.