Few people likely know Ann Turner Cook by name, who passed away in June 2022. Almost everyone is familiar with her face, which graces jars of Gerber baby products. KFC chickens are branded with the image of the fast food chain's founder, Colonel Harland Sanders. The now-defunct Prudential bank advertised with a sketch of the goddess Prudence. Even simple images of the human face, such as the mermaid in the Starbucks logo or the shadow of a woman's silhouette, the symbol for Schwarzkopf shampoo, were subject to trademark registration. So can anyone register their face as a protected trademark? Despite all these examples, the answer is "no"—the issue of using an image as a trademark is much more complex.
The European Union Intellectual Property Office, better known by its English acronym EUIPO, has handled the most difficult case to date concerning the registration of a facial image as a trademark. It concerned the image of Dutch model Maartje Verhoef, who appears for fashion giants such as Prada and H&M. Filed on October 14, 2015, by Giraffen houden van Wodka BV, the frontal, "passport-sized" photograph of a woman was intended to identify products in classes 3, 9, 14, 16, 18, 25, 35, 41, 42, and 44 of the Nice Classification—primarily cosmetics, clothing, and jewelry, but also many other categories. Initially, the application was rejected on the basis of absolute grounds for refusal, examined ex officio. The reason for this was the Office's expert's finding that the trademark was descriptive and lacked distinctive features. According to the EUIPO's then-current case law, an image is generally treated as a descriptive indication of a typical recipient of a product or service. This is justified by the common use of satisfied customer profiles in advertising or on packaging, as well as information, for example, regarding the gender of the intended recipient. However, an appeal was filed against the decision, which was upheld by the Fourth Board of Appeal in its decision of November 16, 2017. The appeal found that the mark submitted was not generic in nature because it clearly depicted a specific person with unique facial features, and therefore could fulfill a distinctive function crucial to a trademark. The claim that a female image on a product clearly suggests the intended recipient's gender was also unfounded, as, particularly in the cosmetics and fashion industries, brands such as Carolina Herrera, Louis Vuitton, Giorgio Armani, and Ralph Lauren manufacture products intended for both sexes.
This is by no means the last case of this type that the EUIPO has had to deal with. In October 2017 and September 2018, respectively, applications were submitted to the Office to register portraits of models Rozanne Verduin and Yasmin Wijnaldum as trademarks. As in the Verhoef case, it was ruled that they lacked distinctive features and therefore could not be registered. The proceedings in these two cases also ended with the Board of Appeal amending its decisions in May 2021 – it was also found that they were sufficiently distinctive to meet the necessary condition for building associations between the mark and the goods or services. However, based on these cases, one might wonder whether this constitutes a double standard in case law. It is worth citing the specific justification given by the first instance of the Office for its decisions in the models case – the images of women were referred to as "faces in a crowd," which did not evoke clear associations. Syb Terpstra of the Dutch-French law firm bureau Brandeis also noted how similar Maartje Verhoef and Rozanne Verduin are in appearance, one might say barely distinguishable, and wondered whether this similarity should allow the former to block the latter's trademark registration, or whether it should be grounds for the revocation of one of these trademarks. Considering that the faces of Formula 1 drivers Max Verstappen and his father Jos have also been approved for registration, one might conclude that these conditions privilege celebrities, regardless of whether this translates into measurable visual recognition.
However, such a conclusion seems a bit excessive. First, it's necessary to recall that the purpose of a trademark is primarily, or perhaps even exclusively, commercial, so it's natural for entrepreneurs to promote their products with the profiles of popular people, or at least well-known in their field, who can somehow influence trends. Furthermore, EU law, as well as Dutch law in the cases described here, protects citizens from having their faces used, even without tangible benefits, without their knowledge or consent. Even in countries with different trademark laws, it's possible to prosecute commercial use of an image. For example, in the British legal system, singer Rihanna successfully obtained compensation from London retailer Topshop for selling T-shirts with her image, even though the company had previously purchased the copyright, because, in her opinion, the company was imitating her products and profiting from her popularity. What's most important about a trademark is the visual recognition of the entire composition, not the person depicted. Most companies that feature human figures in their logos distinguish themselves with a cartoonish style or distinctive color scheme. It's the image itself that's truly protected, not the likeness itself, which is subject to change. The rulings in the Maartje Verhoef and Rozanne Verduin cases undoubtedly change the requirements expected of trademarks. Nevertheless, when asked whether we can register our face as a trademark without any further purpose, the answer remains invariably negative. It doesn't matter whether we're an ordinary Joe or a world-famous celebrity.
This alert is for informational purposes only and does not constitute legal advice.
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