[Guest post] EUIPO Second Board of Appeal refers case to Grand Board of Appeal following earlier refusal to register a photograph of a man’s head/face as an EU trade mark

The IPKat has received and is pleased to host the following guest contribution by former GuestKat Nedim Malovic (ASSA ABLOY), commenting on a recent referral to the EUIPO Grand Board regarding the registrability of face trade marks. Incidentally, the referral was also discussed during last month's IPKat webinar on image rights. Here is what Nedim writes:

[Guest post] EUIPO Second Board of Appeal refers case to Grand Board of Appeal following earlier refusal to register a photograph of a man’s head/face as an EU trade mark

by Nedim Malovic

The question of whether a sign depicting a person’s face can serve as a trade mark has sparked a series of interesting decisions over time. The prevailing principle appears to be that, while it may be more challenging to assess the distinctive character of a sign based on a photograph of a person, this does not mean that such signs are per se ineligible for registration. In particular, when it comes to photographs, recent EUIPO decisions (see IPKat posts here, here and here) remind us that the assessment is not to be conducted in abstracto, but rather having regard to the relevant goods and services.

With this context in mind, it is no wonder that the EUIPO Second Board of Appeal, in Case R 50/2024-2, concerning the earlier refusal to register the portrait of a Dutch entertainer as an EU trade mark (EUTM), decided to stay the proceedings and refer the matter to the Grand Board. The reason being that the decision was erroneous in light of the EUIPO Fourth Board of Appeal’s conclusion in case R 2063/2016-4 where it was held that the portrait of model Maartje Verhoef did not represent “a banal depiction of people in general” but rather “a specific individual with unique facial features” with the result that the image at issue enabled the public to distinguish the goods and services concerned.

Background and referral

In 2015, Jan Smit (the Applicant), a Dutch singer, television host, and actor, submitted an application EUTM registration of the following mark:

Registration was sought for goods and services in Classes 9 (apparatus for recording, transmitting or reproducing sound or images) 16 (printed matter), 24 (textiles), 25 (clothing, t-shirts, jeans), 35 (advertising, business management), and 41 (education and recreation) of the Nice Classification.

In 2016, the EUIPO Examination Division issued a total provisional refusal, citing descriptiveness and a lack of distinctive character under Articles 7(1)(b) and (c), in conjunction with Article 7(2), of the EU Trade Mark Regulation (EUTMR).

The Applicant requested the EUIPO Examination Division (the Office) to withdraw the total provisional refusal. Following extended procedural exchanges between the parties, the Office ultimately refused the EUTM application pursuant to the above provisions. It considered that an image of a man's head/face lacks inherent distinctiveness, as it is perceived as a generic representation rather than a unique indicator of commercial origin.

Mirror, mirror on the wall,
who's the fairest of them all?

For goods like clothing (Class 25), the image reflects the intended audience (men), and for goods and services in Classes 9, 16, 35, and 41, it conveys descriptive information, such as the individual depicted, rather than distinguishing the applicant’s goods and services from those of other undertakings. Considering that images of people are common in advertising and do not inherently indicate commercial origin, even if recognizable, the image in question was deemed a generic and banal representation of a person, unable to fulfil the function of a trade mark, with insufficient evidence provided to demonstrate that it had acquired distinctiveness through use.

The Applicant subsequently appealed the decision to the EUIPO Second Board of Appeal (the Board) and argued that the decision was both erroneous and unclear, particularly in light of the already mentioned EUIPO Fourth Board of Appeal’s findings in case R 2063/2016-4. The Applicant contended that the present decision failed to align with this reasoning and provided no clear justification for departing from it.

Furthermore, while it is true that in the course of the sale or supply of goods and services, customary signs may be so general that they are not perceived as indicators of origin, the Applicant argued that there is no reason to lump all types of an image together, as the Office had done.

In light of the foregoing, the Board decided to stay the proceedings and refer the case to the Grand Board.

Comment

One notable aspect of the current decision by the Office, as well as previous ones, concerns the fame of the person being represented in the image. Can only a famous person be perceived as a trade mark? Judging by past decisions (R 2063/2016-4 and R 2173/2023-4), it might appear so. But if that is true, what level of fame is to be taken into account and across what territories? The Grand Board will tell.