Can a Person’s face be registered as a Trade mark?

The EUIPO (European Union Intellectual Property Office) is currently grappling with a significant issue regarding the registration of a photograph of a person’s face as an EU trade mark. In the case of Jan Smit (R 50/2024-2), the EUIPO Second Board of Appeal has referred the matter to the Grand Board for further review, following an earlier refusal to register a portrait of the Dutch entertainer.

The case revolves around the question of whether an image of a person’s face can serve as a trade mark. While it is generally more challenging to demonstrate the distinctiveness of such signs, the EUIPO’s previous decisions suggest that a photograph may still be registrable if it can sufficiently distinguish goods and services from other undertakings.

In this instance, the image of Jan Smit, a popular Dutch singer, was initially rejected because the EUIPO deemed it a “generic” or “banal” representation, particularly in relation to goods like clothing (Class 25). The EUIPO argued that the photograph, although recognizable, did not serve as an indicator of commercial origin and was instead perceived merely as a descriptive or promotional image.

However, the applicant pointed to a previous decision (R 2063/2016-4) where the portrait of model Maartje Verhoef was deemed distinct enough to be registered. The Second Board of Appeal found this decision to be relevant and decided to stay the case, sending it to the Grand Board for further clarification.

One of the key issues at stake is whether the fame of the person depicted in the image plays a decisive role in determining whether the photograph can function as a trade mark. If the image is of a famous individual, does that automatically make it distinctive? And what level of fame must be considered? These questions will likely be addressed by the Grand Board in the near future.

This case highlights the complexity of assessing trade mark applications for images of people and reinforces the idea that trade mark distinctiveness is not always a straightforward concept, particularly when dealing with images that are commonplace in advertising.

Stay tuned as the Grand Board’s decision could set an important precedent for future trade mark registrations involving photographs of famous individuals.