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The International Trademark Association (INTA) has filed an amicus brief in a case involving the trademarking of a photorealistic image of a human face arguing such images, including of famous people, “should not be automatically excluded from trademark protection”.
The face in question is of Dutch singer and actor Johannes Hendricus Maria Smit (see image above), who is well known in the Netherlands and has a reputation in some other EU states including Germany and Belgium.
In 2015, he sought to register the image, defined as a natural depiction of the real appearance of his face “in the manner of a photograph”.
Lacking distinctiveness and descriptiveness are both grounds for absolute refusal under Article 7(1)(b) and under Article 7(1)(c) of the EU Trade Mark Regulation. The regulation says a mark should be capable of “distinguishing the goods or services of one undertaking from those of other undertakings”.
The EUIPO examiner ruled the image was not capable of distinguishing goods and services in general.
INTA takes the view that the “image of a face of a human being may well serve as a means to distinguish goods and services” if it is used in the course of trade in relation to goods or services and is used in a consistent format and appearance, among other factors.
The brief points out that although average consumers don’t usually perceive a portrait of a person as a trademark, they may nonetheless become trained to perceive faces as source identifiers for goods and services particularly in the restaurant and food sector, one example being the Kentucky Fried Chicken logo depicting the face of the fast-food chain’s founder, Colonel Harland David Sanders.
INTA says establishing whether a sign falls within the absolute grounds of refusal under Article 7(1)(b), which addresses inherent distinctiveness, and Article 7(1)(c), which tackles descriptiveness, is a “complex assessment, which must be carried out by considering various factors and all the circumstances of the case, in light of the market practices of the relevant sector and taking into consideration that the perception of the public may vary over time”.
INTA does, however, maintain that the reputation of a person would not “per se be sufficient to establish acquired distinctiveness” under the regulations since what is required is a systematic use of the sign as a trademark and not the use of the face of the person for non-trademark purposes.
The case is pending before the EUIPO’s Grand Board of Appeal – which usually deals with important and highly controversial matters – to address the lack of consistency within the EUIPO when it comes to the protection of this kind of sign.
INTA says it has intervened because the case not only addresses the registrability of a certain type of image but also what makes a ‘sign’ in trademark law and its impact of personality rights.
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