Is the face a figurative sign like any other? EUIPO takes a stand
What if your face became a trademark? Behind this intriguing idea lies a bold attempt to register a face as a trademark with the European Union Intellectual Property Office (hereinafter “EUIPO”). However, the institution recently issued a clear refusal, citing a lack of distinctive character. But is this rejection justified? Couldn’t the face of a public figure, a designer or an entrepreneur become a genuine distinguishing mark for products or services through repeated use? Today, the debate is far from over: the EUIPO’s Grand Chamber has yet to rule on the case. Pending its decision, it is essential to analyze the grounds for refusal, but also to anticipate what a possible acceptance of a face as a trademark would entail. Would such a registration usher in a new era of trademark law, or would it raise unprecedented issues concerning image rights and the monetization of identity?
Distinctiveness, an essential condition for registration… but absent according to the EUIPO
The registration of a trademark is subject to a number of conditions laid down in Regulation 2017/1001. In addition to the characteristics of lawfulness and availability that the sign must present, article 7§1 under b) of the RME and article 7 §1 under c) of the RME stipulate that trademarks devoid of distinctive and descriptive character are refused registration.
On these grounds, the EUIPO examiner refused to register the image of a human face as a European Union trademark.
In this case, the applicant is a singer, actor and television presenter who is well known in the Netherlands and has acquired a certain reputation in Germany, Austria, Belgium and Switzerland. For a number of years, the applicant sought to market a fashion brand of the same name, which, however, was not commercially successful. Against this backdrop, on October 23, 2015 he filed an application for registration of his figurative trademark consisting of a portrait photo of his face.
The EUIPO examiner refused this registration, considering that the sign was devoid of intrinsic distinctiveness and descriptive, while rejecting any potential distinctiveness through use.
Regarding the absence of intrinsic distinctiveness, the EUIPO considered that this criterion depended on the presence or absence of particular features on the face, and on the reputation of the person. In fact, the examiner considered that for a photo trademark to be distinctive, the representation must present particular features “with regard to the eyes, nose, mouth, ears or hair” or must “concern a well-known personality in the EUMS“. On the other hand, the examiner considered that a person’s reputation contributes to making the trademark unregistrable for the goods and services for which the person is known, but the photo of the face as such must have a certain reputation for consumers to refer to it as a trademark.
Regarding the descriptive character of the sign, the examiner considered that the face was descriptive in that it designated the category of consumers for whom the goods were intended and communicated information about the product. The EUIPO also pointed out that it is common practice to associate a photo of a face with the person providing a service. Consequently, there are many photos of male faces, and this photo does not distinguish the brand’s products and services from others.
Finally, concerning the rejection of distinctiveness through use, the examiner recalls that, in order to establish a rejection based on the absence of distinctiveness acquired through use, it must be shown that the sign in question, here the face, is used as a trademark, i.e. as an indicator of commercial origin and not for other uses.
This rejection was strongly criticized by INTA, which considered UEIPO’s arguments to be arbitrary[1]. Not surprisingly, the applicant appealed the decision to the UEIPO Board of Appeal on January 8, 2024. By decision of September 26, 2024, the Second Board of Appeal referred the case to the Enlarged Board of Appeal, whose decision is now awaited.
A questionable refusal: towards possible recognition of the face as a brand?
While the EUIPO rejected the application to register a face as a trademark on the grounds of lack of distinctive character, this decision is not without contradictions. Indeed, several similar cases have resulted in acceptance, calling into question the idea that a face could never constitute a distinctive sign. A study of these precedents shows that certain conditions must be met before a face can be granted trademark status. The central question then becomes: under what conditions can a face be registered as a trademark and enjoy legal protection?
Several court rulings have shown that a face can be accepted as a trademark, provided it meets specific criteria. In Germany, the portrait of the famous actress Marlene Dietrich was registered as a trademark, confirming that a face can be perceived as an element of commercial identification. The German Federal Court ruled that the image of a personality could play the same role as a name, as long as it enabled the public to immediately identify a specific commercial source[2]. This recognition is part of a wider movement, since, according to a Hungarian university study[3], 57 male portrait trademarks and 23 female portrait trademarks are currently protected as trademarks in the European Union. These examples show that the EUIPO has already accepted similar registrations, making the recent refusal questionable.
This contradiction becomes all the more apparent when we consider the figurative trademarks accepted by the EUIPO. Indeed, iconic characters such as Mr. Clean or Colonel Sanders (KFC) have been protected in the form of stylized drawings. In the EUIPO’s November 16, 2017 decision, the chamber had ruled that “the sign in question is, however, clearly and unmistakably the image of a specific person, with his or her unique facial features”[4]. This ruling considered that the fact that a face is realistic does not prevent it from being perceived as a commercial identifier. It is therefore legitimate to wonder about the difference in treatment between these accepted trademarks and the current refusal, especially as there is nothing in the legislation requiring a figurative trademark to be stylized in order to be registered.
The decisions that have validated the registration of faces as trademarks highlight several decisive criteria. Firstly, a face can be accepted if it is immediately associated with a product or service. For example, in the baby products sector, a trademark incorporating an infant’s face could be perceived as distinctive, as it would directly evoke the products concerned. This approach was confirmed by the EUIPO in a ruling dated May 19, 2021, where the Board of Appeal recalled that consumer perception plays a key role in the analysis of distinctiveness[5]. Another essential element is the notoriety of the face depicted. In the case rejected by the EUIPO in 2023, the Office pointed out that the applicant, although known in certain European countries, did not enjoy sufficient recognition throughout the EU. However, this notoriety requirement is not applied with the same rigor to other types of trademark, notably brand names. For example, celebrity names such as Stéphane Plaza for the real estate agency network have been registered. This inconsistency raises a legitimate question: if a celebrity’s name can be registered, why can’t his or her portrait be registered too, even though a face is often more evocative than a simple name?
One of the arguments put forward by the EUIPO in its refusal was that the applicant’s face could be interpreted as a mere advertising representation, and not as a trademark per se. However, this distinction has been called into question by case law. In a case dated April 29, the Court of Justice held that if the public (also) perceives the sign as an indication of origin for the goods or services in question, distinctiveness cannot be denied on the grounds that it is simultaneously or even primarily perceived as an advertising medium[6]. This reasoning applies directly to faces used in commerce: a portrait, even if realistic, can be perceived by consumers as an indicator of commercial origin, particularly when used consistently on specific products or services.
These considerations show that the EUIPO’s rejection is not definitive, and that there are sound arguments in favor of registering a face as a trademark. The central question remains that of the legal framework to be established for this practice. The EUIPO’s Enlarged Board of Appeal will have to settle an essential debate for the future of trademark law in Europe: can a face be a distinctive sign in its own right, or should it remain outside the scope of intellectual property?
Registering a face as a trademark: what are the legal implications?
If facial recognition as a trademark were to be validated, it would raise a host of legal issues.
One of the first obstacles to recognizing a face as a trademark lies in its interaction with image rights. Unlike trademark law, which confers a monopoly on economic exploitation, image rights are personality rights, designed to protect the integrity and dignity of individuals. This raises the question of post-mortem protection of the face as a trademark.
In France, image rights are extinguished on the death of the person concerned, unless specific provisions are made or the heirs express their wishes[7]. Conversely, some countries, such as Spain and certain American states, allow heirs to control the use of a person’s image even after death[8]. This legislative divergence could pose difficulties in the case of cross-border use of a face registered as a trademark.
If a trademark representing a face were to be registered, what would happen after the person’s death? Could it be freely used or transferred to third parties as a mere commercial asset, without regard for the dignity of the deceased? This question raises issues already raised by the Marlene Dietrich case in Germany, where her image was registered as a trademark after her death, raising ethical debates about the transformation of a person’s identity into an exploitable asset.
In countries where post-mortem personality rights are not protected, the recognition of a face as a trademark could lead to abuses: uncontrolled exploitation by third-party companies, misappropriated use of the deceased’s image, or even conflicts between heirs and trademark owners. The balance between post-mortem protection and freedom of commercial exploitation will have to be carefully balanced.
Another major question is whether the exploitation of a face can be monetized solely via a trademark. If an individual decides to register his own face, does this give him a total monopoly on its commercial exploitation?
In trademark law, registration confers an exclusive right to the commercial use of the sign for the goods and services in question, but this does not mean that other means of protection cannot exist. The representation of a face can also be protected by copyright, particularly if the image is stylized or is the subject of a particular artistic creation. As a result, exploitation of the face could be subject to a hybrid regime, where trademark rights, copyright and image rights coexist, making protection and exploitation more complex.
In this context, a question arises: what would be the contours of infringement if a third party used a face similar to the one registered as a trademark? This is a particularly sensitive issue for celebrities, whose images are often exploited for commercial purposes without their consent. EUIPO jurisprudence might require a likelihood of confusion analysis, as it does for classic trademarks, but applying such reasoning to a human face remains a grey area.
One of the major challenges posed by the recognition of a face as a trademark lies in the question of the variations of the registered sign. Is a face protected in all its forms by a single registration, or is it necessary to register several versions (wink, smile, grimace, etc.) to ensure effective protection?
This is not a new issue in trademark law. It has already arisen for figurative trademarks representing famous characters or evolving logos. A parallel can be drawn with Colonel Sanders (KFC), Monsieur Propre or the Lacoste crocodile.
The KFC and Mr. Clean trademarks are stylized and protect a specific representation of the character. But what happens if a company uses a modified version of the character (for example, Colonel Sanders without glasses or with a different smile)? In practice, jurisprudence accepts that a significant modification may justify a separate registration, unless the initial trademark is sufficiently distinctive to cover these variants[9].
The Lacoste crocodile has been the subject of numerous disputes, notably with brands using a crocodile in a different posture. European rulings have shown that a significant change in posture or design can be sufficient to avoid infringement, provided the public is not misled[10].
These examples show that if a face were registered as a trademark, every change in facial expression might require a new application. For example, a registered smiling face would not necessarily be protected in a different form (grimace, wink, serious look). The EUIPO could require a new filing for each significant variation, which would raise the question of cost and administrative management for the owners of such trademarks.
Finally, if a figurative trademark depicting a face is protected, what would be the scope of infringement in the event of a minor modification? Could the use of a slightly altered version be qualified as trademark infringement? Current case law on figurative trademarks shows that recognition of infringement will depend mainly on the degree of similarity and the likelihood of confusion.
In a world where data and images are exploited without limit, the issue of face protection takes on a new dimension. Between artificial intelligence, deepfakes and digital avatars, a person’s image is becoming a veritable asset that can be exploited on a massive scale. And yet, the legal protection afforded to this exploitation varies from country to country, oscillating between commercial freedom and respect for image rights.
In this context, registering a face as a trademark could be a strategic tool for establishing a clear framework and securing its use for commercial purposes. At a time when images can be monetized in various forms – advertising, merchandising, virtual representation – such protection would offer a monopoly of exploitation and significant economic leverage.
[1] INTA, Third party observation – Johannes Hendricus Smit c/ EUIPO, p.5
[2] Bundesgerichtshof, decision of April 24, 2008 (I ZB 21/06), Marlene Dietrich Bildnis I.
[3] BARNA ARNOLD KESERŰ, Trademark protection for Faces?– A comprehensive analysis on the benefits and drawbacks of trademarks and the right to facial images, Journal of Intellectual Property, Information Technology and Electronic Commerce Law (jipitec), 2024, page 88 ff.
[4] EUIPO Fourth Board of Appeal, November 16, 2017, No. R 2063/2016-4, DEVICE (PHOTO) OF A WOMAN’S HEAD
[5] the Fourth Board of Appeal of the EUIPO, May 19, 2021, No. R 378/2021-4, WEERGAVE VAN HET GEZICHT VAN EEN PERSOON
[6] CJEU, April 29, 2004, Joined Cases C-473/01 P and C-474/01 P, Procter & Gamble v OHIM, EU:C:2004:260, paragraph 36.
[7] Article 9 Code civile ; Cour de cassation, 1re chambre civile, 31/01/2018 ; article UGGC du 04/07/2022 : The right to the image of the deceased
[8] In California, Cal. Civ Code § 3344.1 protects posthumous rights of publicity for 70 years after death. This right, considered a transmissible asset, can be assigned, licensed or inherited.
In Spain, Organic Law 1/1982 provides for posthumous protection of image rights. Under article 4.1, these rights may be exercised by the person designated by the deceased in his or her will.
[9] Rintisch case (CJEU, Oct. 25, 2012, aff. C-553/11)
[10] EUIPO, Opposition Division, Opposition No. B 3 203 568, 07/31/2024