A face of a woman cannot be registered as trademark if it lacks distinctive character

The European Union Intellectual Property Office – EUIPO – has recently rejected the EU trademark application of a sign consisting in the photographic representation of a woman’s face (in particular, of the face of a Dutch model) claiming classes 35 and 41 specified as follows:

  • Class 35: services of mannequins and models for advertising or sales promotion.
  • Class 41: services of mannequins and models for relaxing and recreational purposes.

Lack of intrinsic distinctive character

The trademark application, in fact, was considered to be lacking of intrinsic distinctive character.

In this regard, if lacking distinctive character, the Office preliminarily decides whether to reject a trademark (art 7(1)(B) EUTMR). The lack of distinctive character implies that the sign is unfit to carry out the essential function of a sign, that is to create a connection between the product/service offered and the underlying commercial origin. In other words, the trademark, in order to be registered, has to allow the consumer to distinguish a certain good/service from another of other companies operating in the same sector (without making analytical or comparative researches and without having to pay much attention). If this requirement is not met, the sign has no distinctive character and cannot be registered.

In the case under exam, to evaluate the presence of distinctive character, it is necessary to judge if on the one hand the representation of the woman’s face could – on its own – influence the memory of the target audience and create a connection with the underlying commercial origin of the service offered, and on the other if the way in which it is represented shows special characteristics that could indicate its origin.

The applicant supported its position by stating that the image of the woman is a unique representation (as there are no other human beings with such features). Nevertheless, such “uniqueness” is not sufficient to give distinctive character to the requested trademark.

As a matter of fact, if there is certainly no doubt that each person is unique in principle, recognizing a person as that “particular” person is not equivalent to consider the image under exam as an indicator of commercial origin. “Uniqueness” and “distinctiveness” as matter of fact, are two different concepts. “Uniqueness” is defined as the state or quality of a being to be unique and unrepeatable, whereas “distinctiveness” means that a certain feature distinguishes something from something else. Obviously, there can be dominant or surprising features in a face (for example a particular nose or a specific hair color) that could be taken into consideration to determine a distinctive character.

Nevertheless, the Office believes that the image under exam does not show any special feature that could influence the memory of the consumer to the extent of being able to distinguish the services offered through such sign from another. The consumer, in brief, will simply see the face of a woman, but not necessarily the face of that specific model, subject of the photograph.

Lack of distinctive character as a consequence of the use

In this case the only way out to obtain the registration of the sign is to demonstrate that the portrait acquired distinctive character as a result of the use all over the European Union. The evaluation must take into consideration, in particular, factors such as the market share of the trademark, the intensity, the geographical diffusion, the duration of the use of the trademark, the entity of the advertisement costs bore by the company for the trademark, the percentage of the relevant environment that identify the product based on the trademark as originating from a specific company, as well as the declaration of the Chamber of Commerce and other category association.

The fact that the applicant claims that the image refers to a worldwide well-known model, known to the most renowned and influent fashion houses, does not justify in any way the conclusion for which the target audience interpret her image as an indication of commercial origin.

The applicant, therefore, failed to demonstrate that the trademark object of dispute is perceived by the audience as a direct reference to the applicant services, not even as a result of its use. Consequently, it cannot be registered as trademark in the European Union.


Tania Giampieri