On January 9, 2025, the International Trademark Association (INTA) submitted an amicus brief (third-party opinion) to the Grand Board of Appeal (GBoA) of the European Union Intellectual Property Office (EUIPO) in relation to case R 50/2024-2. The case concerns an application filed by Johannes Hendricus Maria Smit with EUIPO, exploring the protectability of a logo consisting of a realistic facial image of a person, including celebrities, as a trademark.

    The case involves the registration of a realistic facial image as an EU trademark. According to the EU trademark application No. 014711907, filed on October 23, 2015, the applicant (a popular Dutch singer/actor in several EU countries) seeks to register an image of his face, which appears to be a "natural" photographic depiction of his real facial appearance.

    In a decision made by EUIPO on December 19, 2023, the examiner rejected the registration of the photograph as a graphic trademark for various goods in Classes 9, 16, 24, and 25, as well as services in Classes 35 and 41, on the grounds of lack of distinctiveness and descriptiveness. The applicant appealed on January 8, 2024, primarily citing previous case law in which similar rejections were overturned.

    In a decision made on September 26, 2024, the EUIPO Second Board of Appeal referred the case to the GBoA (which typically handles significant and/or controversial issues) to address internal inconsistencies within the office regarding the protection of such marks. Specifically, the Board of Appeal’s decision mentioned that EUIPO had systematically rejected marks containing realistic facial images of persons, including celebrities, on the grounds of lack of inherent distinctiveness and/or descriptiveness, although the Board of Appeal had recently adopted a more flexible approach.

    In its amicus brief, INTA argued that the mere submission of a photographic facial image does not raise concerns about the ability to distinguish general goods and services, nor does it pose issues related to distinctiveness, descriptiveness, or personality rights. Indeed, logos made up of realistic facial images of persons, including celebrities, are not excluded from trademark protection by default.

    INTA particularly pointed out that the mere fact that a logo is a portrait of a person (even if it is a celebrity portrait) does not, in itself, determine that the logo lacks inherent distinctiveness or is descriptive under Article 7(1)(b) and (c) of the EU Trademark Regulation (EUTMR). Determining whether a mark falls under any of the absolute grounds for refusal under EUTMR Article 7(1)(b) and (c) is a complex assessment that must be based on the market practices of the relevant industry and consider that public perception may change over time, taking into account all factors and circumstances of the case.

    In assessing the inherent distinctiveness/descriptiveness of a mark composed of a realistic facial image, INTA emphasized that the object of trademark protection is not the face of the person or their portrait but rather the specific realistic image of the person. A trademark made up of a realistic facial image of a person will exist independently of the person depicted, much like the famous KFC logo, which depicts the facial features of the fast food chain’s founder, Colonel Harland David Sanders.

    The fact that physical features may change over time and/or that the current fame of the depicted person does not necessarily affect the registrability of the realistic photographic image of that person as a trademark.

    Moreover, INTA noted that under Article 7(3) of the EUTMR, an individual’s reputation alone is insufficient to prove acquired distinctiveness. What is required is the systematic use of the mark as a trademark, rather than using a person’s face for non-trademark purposes (e.g., a model depicted in a trademark for a modeling agency).

    About INTA

    INTA is a global association composed of brand owners and professionals dedicated to supporting trademarks and related intellectual property to foster consumer trust, economic growth, and innovation. Its members include nearly 6,000 organizations representing over 33,500 individuals (brand owners, professionals, and academics) from 181 countries, who benefit from INTA's global trademark resources, policy development, education and training, and international network. Founded in 1878 and headquartered in New York, INTA also has offices in Beijing, Brussels, Santiago, Singapore, and Washington, D.C., and representation in Amman, Nairobi, and New Delhi. For more information, visit the official INTA website. (Source: www.inta.org)