The EUIPO Examination Division has rejected an application to register a figurative mark comprising of an image of Dutch model, Puck Schrover (see below), on the basis that the mark lacks distinctive character and/or acquired distinctiveness. 

This decision does not mean that marks depicting human faces cannot be registered as trade marks (see for example KFC’s registration of Colonel Sanders). However, the decision demonstrates the difficulty of such applications fulfilling the function of a trade mark (i.e. indicating the origin of goods and/or services), and therefore being registrable. 

Background 
PS Holding BV (the “Applicant”) filed an application for an EUTM registration of the following figurative mark, depicting a portrait of Dutch model, Puck Schrover. Puck Schrover is an international model, who has worked for Louis Vuitton, Dior, and Chanel (to name a few).                                                      

 The application was filed in classes 35 (“mannequins and photo models for advertising or sales promotion”) and 41 (“models and mannequins for recreational or leisure purposes”). 

The law 

Under the EU Trade Mark Regulation (“EUTMR”), a mark shall not be registered if it is devoid of any distinctive character. This ground of refusal will not apply, however, if the mark has acquired distinctiveness in relation to the goods/services through use of the mark. 

The decision 

(1) Lack of distinctive character

The EUIPO found this mark lacked distinctive character for the following reasons:

• The mark must enable the relevant public to distinguish the goods/services from those of other companies. For classes 35 and 41, it is not unusual for these services to be offered with images of the people providing the services (i.e. models). The EUIPO therefore found that the mark consists of an image that could be used for the presentation of the services, making the mark devoid of distinctive character as it could not be separated from the services. 
• Uniqueness does not equate to distinctiveness i.e. just because a portrait is unique it does not mean it can distinguish a good or service from others. Although the mark depicted a unique appearance, it does not have any striking or dominant features that could indicate distinctiveness, so as to distinguish from the services of others.
• The Applicant argued that the mark was distinctive as Puck Schrover’s face is her brand. However, this was dismissed as the relevant public would just see the face of a young woman, as not everyone would be familiar with Puck Schrover. 

(2) Acquired distinctiveness?

The EUIPO also found that the application could not be saved by Article 7(3) EUTMR, as the mark had not acquired distinctiveness through use. 

The Applicant argued that the mark enjoys international fame, as Puck Schrover is a well-known model would has worked for various major fashion brands. However, this fame does not mean that the relevant public would understand the mark to be an indication of commercial origin. 

Comment 

The EUIPO does not rule out that a figurative mark depicting a portrait or human face can be registered as an EUTM. In fact, following an appeal of the initial decision, the below mark of Maartje Verhoef was registered in 2018. The key difference between the decisions is that Maartje’s portrait was registered in a much wider group of classes, so the mark could be separated from the goods and/or services.  

The main consideration for those applying for figurative marks consisting of a human face, is that irrespective of how “unique” the portrait it is, it must be capable of being perceived by the relevant public as an indicator of the commercial origin of the goods or services in question. The difficulty here, as discussed in the decision, is that the relevant public are used to perceiving human faces in relation to goods/services as promotions for those goods/services, and not as indicators of origin. 

There is also the difficulty of registering famous faces. The decision suggests that for a portrait to be registrable, it needs to be sufficiently well known to acquire distinctiveness, but not so well known that it no longer acts as an indicator of origin.