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This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 1: Frontier Technologies and Intellectual Property Adjudication

Fourth Board of Appeal of the European Union Intellectual Property Office [2024]: WEERGAVE VAN HET GEZICHT VAN EEN PERSOON (fig.), Case No. R2173/2023-4

Date of judgment: 30/01/2024

Issuing authority: Fourth Board of Appeal of the European Union Intellectual Property Office

Level of the issuing authority: First Instance

Type of procedure: Administrative

Subject matter: Trademarks

Applicant/Appellant: PS Holding B.V.

Defendant: 

Keywords: Trademark, Distinctive element, Distinctiveness acquired by use

Basic facts:

This decision from the Fourth Board of Appeal involves an appeal regarding an EU trade mark application for an image of a woman’s face, intended to cover services in Classes 35 and 41, including mannequins and models for publicity and entertainment. The application was initially rejected by the examiner under Article 7(1)(b) of the European Union Trade Mark Regulation (EUTMR), which disallows marks lacking distinctive character.

Key points of the decision:

1.    Examiner’s Initial Refusal: The examiner argued that images of faces are common in the fields of fashion and modeling and that the face in question did not display any unique or striking characteristics to differentiate the services.

2.    Applicant’s Appeal: PS Holding B.V. contested the refusal, arguing that the face in question belongs to a well-known figure in the fashion world, with significant recognition across the EU. It claimed that the face was not only unique but could also serve as a distinctive mark for their services, helping to distinguish them from other providers. The applicant also cited previous cases where the Boards of Appeal had found similar images of faces to be distinctive.

3.    Board of Appeal’s Assessment:

-      Perception of the Relevant Public: The Board stressed that the image must be assessed from the perspective of the relevant public, which includes both the general public and professionals in the fashion and modeling industries (in this case, consumers of services in Classes 35 and 41).

-      Distinctiveness and Faithful Representation: The Board disagreed with the examiner´s conclusions, noting that while the face may be a faithful representation, this does not preclude it from serving as a trade mark. The Board found that the image was capable of distinguishing the services in question, particularly since the public would likely associate the services with the individual depicted in the image. In particular, it considered that the representation of the face in the form of a passport photograph applies to the identification of a person and thus to his or her distinctions from other persons.

-      Essential Function of a trade mark: The Board concluded that the image fulfilled the essential function of a trade mark, which is to allow the public to distinguish the origin of services without confusion.

-      Precedent Cases: To support its decision, the Board cited several previous cases in which photographic or figurative marks of individuals’ faces were accepted as distinctive, including decisions where similar or even identical services in Classes 35 and 41 (publicity and modeling) were at issue. The Board concluded that, in those cases, the public was able to associate the images with a particular commercial origin, reinforcing the argument that the image in the present case could also perform this function.

-      Examiner’s Misapplication of Case Law: Ultimately, the Board also critiqued the examiner’s reliance on outdated or unrelated case law to justify the refusal. The examiner cited a 2001 case involving a stylized ‘doll’s head’ for toys, which was ruled to lack distinctiveness because it resembled a generic baby doll head, common in the toy industry. The Board found this comparison irrelevant because the PS Holding B.V. application involved a real person’s face, not a stylized or generic depiction.

4.    Conclusion: The Board annulled the examiner’s decision, allowing the trade mark to proceed to publication. In summary, the decision found that the image of a face, even though a realistic depiction, could still function as a trade mark if it allowed the public to identify the services’ origin.

Held: The Board found the applicant’s arguments and evidence sufficient to overturn the refusal, leading to the annulment of the contested decision.

Relevant holdings in relation to Frontier Technologies and Intellectual Property Adjudication: The decision found that the image of a face, even though a realistic depiction, could still function as a trade mark if it allowed the public to identify the services’ origin. If the picture were AI-generated, would that change the analysis?

Relevant legislation: Article 7(1)(b) EUTMR, Article 7(3) EUTMR