Over time, people have registered as a trademark all sorts of signs: from the simplest to the most unimaginable words, shapes, drawings, even sounds. To date, more than two million trade marks have been registered with the European Union Intellectual Property Office (EUIPO), so anyone who wants to register a new trade mark that is not identical or similar to any existing trade mark must be creative. Or is it enough to record his face? Can the traits that distinguish us from each other in everyday life also differentiate us from competitors in the market?
In 2018, Dutch model Maartje Verhoef made history by becoming the first person to successfully register her face as a trademark with EUIPO. The model wanted registration for goods and services in classes 3, 9, 14, 16, 16, 18, 25, 35, 41, 42 and 44 according to the Nice Classification. These include goods such as make-up, jewellery, magazines, clothing, lingerie and bags, as well as retail services relating to such products.
Maartje Verhoef is a Dutch model who has appeared in campaigns for fashion brands such as Prada, Gucci and Calvin Klein. In 2015, she decided to take a unique step to protect her image and identity by filing a trade mark application with EUIPO. The application was for a figurative mark, namely the passport photo of the dummy.
Initially, the examiner refused registration of the mark on the grounds that it was partly descriptive and devoid of distinctive character. The reviewer argued that, in his opinion, the image does not have any special feature capable of influencing consumers’ memory so that they can distinguish goods and services labelled with that image from those of others. According to the examiner, the form of presentation is no different from other representations of women’s faces, so that the consumer would only see the image of a head or face, but not necessarily that of Maartje Verhoef.
Ms Verhoef challenged that decision, and in 2017, EUIPO’s Fourth Board of Appeal had to decide whether the passport photo, i.e. the model’s face in that image, constituted a trademark. Finally, in overturning the examiner’s decision, EUIPO’s Fourth Board of Appeal concluded that the image, which represented a particular person with his unique facial features, ‘in fact enables the public to distinguish the goods and services in question from those of a different commercial origin and, in particular, from the specific person represented’. Even though the photograph was in the form of a passport photo, represented in common colours and with a common background, it was still a unique representation of the person, with the ability to identify that person. As such, Ms Verhoef’s face image was considered capable of meeting the requirements of a trade mark. Nothing in the photograph can be interpreted as identifying the goods and services in question, and the sign does not depend on the appearance of the designated goods. Thus, the Board of Appeal concludes that the portrait may serve as a trademark.
Conclusions
This historic decision has opened up a new field of intellectual property law, allowing individuals to protect their own image in the same way that companies protect their word or figurative trademarks, in other words “ordinary” ones.
Verhoef’s trademark application has also sparked a debate about the implications of allowing individuals to register their faces as trademarks. On the one hand, it could be argued that it is a positive step towards protecting the rights of individuals and giving control over their own image. On the other hand, some argued that it could lead to a situation where celebrities and other public figures could control how their images are used, which could negatively impact freedom of expression.
However, the possibility of registering a portrait photo as a trademark gives artists, models, sports stars, designers or personalities from the business world the opportunity to mark and market products not only under their own name, but also with their specific appearance.
