7th March 2025

Long Read by Gordon Williams, Helene Whelbourn & Sophie Anim

Brand owners should be alive to the uncertainty that surrounds the scope of legal protection afforded to depictions of human faces and look out for guidance which is to be handed down by the European Intellectual Property Office (“EUIPO”) Grand Board of Appeal (“GBA”) in the case of R 50/2024-2, Johannes Hendricus Maria Smit / EUIPO, which should provide some much-needed clarity…

Background

In this particular case, a singer with notoriety primarily in the Netherlands applied to register the following image of his face as an EU trade mark in 2015 (the “Mark”):

At first instance, the EUIPO refused to register this application in the applied for classes (which included class 9 (audio recordings) and 25 (clothing), among others). In brief, the Examiner:

• held that the Mark lacked “distinctiveness”. This means that the mark failed to distinguish the applicable goods and services from other economic undertakings in the marketplace. To that end, the Examiner highlighted that many goods and services are offered with the image of the famous person providing the same. Consumers would understand that an image of the well-known person does not serve as an indicator of commercial origin; it simply serves as a descriptor of the subject matter of the goods;
• flagged that photographic images of human faces appear ubiquitously throughout the advertising of goods and services. Therefore, only images of faces with distinctive features, such as Barbara Streisand’s nose, would potentially be capable of distinguishing goods and services from other sources; and
• rejected the argument that the Mark had acquired distinctiveness as a result of Mr Smit’s reputation. The Examiner explained that consistent and systematic use of a sign as a trade mark (i.e. as a badge of origin) is required for this argument to succeed. This means that use of Mr Smit’s face in a non-trade mark sense (e.g. images of Mr Smit which are not used to denote a single source of commercial origin) will not assist with meeting the relevant burden of proof here given the subject of the Mark is a specific photograph and not Mr Smit’s actual face.

Following lengthy delays, whilst the application was suspended pending a decision in an earlier case, the application was finally refused. On 8 January 2024, the Applicant appealed the first instance decision.

Against a backdrop of the EUIPO systematically refusing registration of trade marks containing the face of a person pursuant to Article 7(1)(b) and/or Article 7(1)(c) of the EUTMR and, in recent years, the Board of Appeal, in various decisions, ruling that EU trade mark applications containing a person’s face are not inherently devoid of distinctive character, the case was subsequently referred to the GBA given its subject matter and legal difficulty.

Latest Developments

Whilst we await the GBA’s decision, the International Trade Mark Association (“INTA”) has presented itself as an amicus curiae (i.e. a “friend of the court”) in light of the case’s significance to the development of trade mark law. INTA has filed a Brief which we consider will likely carry much weight in the GBA’s decision-making and may hint at where we can expect the law to develop in this area.

The key points to note from INTA’s Amicus Brief are as follows:

In INTA’s view, a depiction of a human face (albeit a photo or drawing) may well attract trade mark protection subject to some caveats. Indeed, INTA asserts that an image of a human face may function to distinguish goods and services if:

• the applicable mark is used in respect of goods and services in the course of trade;
• the format and appearance of the applicable mark remains consistent when used;
• the applicable mark is used in a way which the public understands as typical for trade marks – INTA provided an example of the applicable mark being used in a specific position on any applicable goods; and
• the depiction of the human face has special characteristics which separates it from a “normal” image or, in the applicable market, the public is used to portraits being used as trade marks. For instance, in the food sector, depictions of faces are commonly used as trade marks (e.g. Kentucky Fried Chicken’s logo depicting Colonel Sanders, the founder of the fast-food chain).

A photorealistic facial image, including a famous one, may serve to distinguish goods and services from those of other economic undertakings, which is essential to the function of a trade mark. However, this requires a complex assessment, with various contextual factors ultimately influencing this assessment, including varying public perception over time.

As mentioned above, the Examiner in the first instance decision was concerned that a depiction of a human face would serve as a descriptor of the applicable goods because it would be understood to represent a category for whom the goods and/or services were intended. For example, a male human face appearing on some goods could denote that the applicable products are simply for a male audience. Indeed, the use of an image of a famous face, such as Mr Smit’s on music goods, would be perceived as an indicator for the records featuring Mr Smit’s music generally rather than goods emanating from Mr Smit as a single source. However, it is INTA’s view that it is necessary to carry out a complex assessment to ascertain whether a trade mark consisting of a photorealistic image of a face is descriptive in nature: it is not a foregone conclusion that a portrait mark would be descriptive in nature (and therefore unable to attract trade mark protection).

In the event it is not possible for an applicant to establish that a mark is distinctive and therefore eligible for trade mark protection, an alternative route is to try to establish that the applicable mark has acquired distinctiveness through use. In order to meet the threshold here, INTA asserts that the applicant must show that the portrait mark has been consistently and systematically used in a trade mark sense (i.e. as an indicator of commercial origin) and is not the face of an individual in non-trade mark uses.

INTA acknowledges that the acceptance of an image of a human face as a protected trade mark raises moral concerns, particularly as there may be an overlap with “image rights” (also referred to as “personality rights”) (i.e. the right to prevent unauthorised use of the name or likeness associated with a particular individual). In England and Wales, a codified law of image rights does not exist. As a result, individuals wishing to protect their image rights must rely on different statutory and common law causes of action, such as passing off. Ultimately, the ability to register a photorealistic facial image as a trade mark may therefore clarify and enhance the protection afforded to brand owners in this regard. However, INTA considers it is worth noting that in some jurisdictions (e.g. the US), a declaration of consent of the applicable living individual who wishes to register an image of their face as a trade mark is required to be submitted as part of an application. INTA anticipates that the EU may also adopt this practice in order to mitigate any moral concerns.

INTA avers that it is possible to assess the similarity of portrait marks and that not all images of human faces are the same. It is therefore possible for a portrait mark to be enforced against any third party infringing marks.

Key Takeaways for our Clients

In the event the GBA is influenced by INTA’s Amicus Brief, it is likely that it will decide that photorealistic images of human faces are signs that are capable of attracting trade mark protection on the basis that they can function as distinctive and non-descriptive marks that can be enforced against third parties. Until such point, brand owners should be mindful that any applications for trade mark protection of depictions of human faces may very well be refused in the EU (and elsewhere).

Any individual wishing to potentially register a portrait mark should ensure they are using the mark in a consistent and systematic manner, and in a trade mark sense (i.e. as an indicator of commercial origin of the applicable goods and services). This will mean that in the event the portrait mark is not held to be distinctive in nature by an examiner, the applicant may potentially still be able to rely on the ground of acquired distinctiveness to secure registration. Remember, it is highly likely the GBA will reiterate that the applicable famous individual’s reputation itself, and in the absence of use as a trade mark, is not enough to meet the threshold for acquired distinctiveness.

Keep an eye out for the GBA’s decision and more updates from the Brand Protection team at Lee & Thompson in respect of this important legal issue.

If you would like more information on this issue and advice in relation to your trade mark portfolio or brand protection strategy, please do get in touch with a member of our Brand Protection team.