On 16 November 2017, the Board of Appeal of the European Union Intellectual Property Office (the “EUIPO Board of Appeal”) reversed the EUIPO examiner’s refusal to register a portrait photograph of the Dutch model Maartje Verhoef as an European Union Trade Mark (“EUTM”) for a large number of products and services.
According to the EUIPO examiner, a portrait photograph of a woman (i) has no inherently distinctive character since it does not differ from other portrait photographs of other women; and (ii) has a descriptive character in so far as that picture merely describes the category of consumers for which the goods are intended (i.e., women) and in so far as the picture represents the model or the fashion designer. In relation to other goods and services, the examiner held that the sign lacks any distinctive character and does not allow for the distinction of the goods and services of the applicant from those of another commercial origin.
Upon appeal by Ms. Verhoef, the EUIPO Board of Appeal overturned the examiner’s decision holding that the photograph clearly depicted one particular woman and that the relevant public would not perceive that photograph as a direct link to the target audience (i.e., women) since there are also female fashion designers that design collections for men, and vice versa. Furthermore, the EUIPO Board of Appeal rejected the reasoning of the examiner that the portrait merely represents the person providing the services in question and thus found the portrait photograph to have sufficient distinctive character to qualify for trade mark protection. In other words, according to the EUIPO Board of Appeal, the photograph can be perceived as an indication of the commercial origin of these goods and/or services since a portrait photograph is a unique representation of a person. Consequently, such a photograph inherently has the capacity to fulfil the essential function of a trade mark, which is to distinguish the products for which registration is sought from those of another commercial origin.
