In May, the Board of Appeal of the EUIPO decided that the portrait photographs of two Dutch models, Yasmin Wijnaldum and Rozanne Verduin, can be registered as trademarks in the European Union for use in connection with the services of models and mannequins. In the Netherlands, a portrait may be protected based on portrait rights (which are regulated in the Dutch Copyright Act). In recent years, the protection of portraits through trademark registration has not been subject to much debate, simply because not everyone sees the added value of portrait marks. Will the judgments of the Board of Appeal change this?
The decisions of the Board of Appeal concerning both models (Wijnaldum decision & Verduin decision) came after the EUIPO had previously decided that the portraits could not be registered as trademarks. The reason for the refusal by the EUIPO was that, according to the EUIPO, the trademarks, which the models applied for, lacked distinctive character. This is a core requirement for obtaining a valid trademark, which stems from its primary function: a trademark must indicate the origin of a product or service. If a mark, in this case the portrait, is not distinctive, it cannot fulfil that function. Whereas the EUIPO called the portrait photos merely a ‘face in the crowd,’ the Board of Appeal decided that the portrait photos do have a distinctive character. As a result, (the portrait photos of) Yasmin Wijnaldum and Rozanne Verduin have now been registered as EU trademarks.
Portrait trademarks are not uncommon
Wijnaldum and Verduin are not the only ones with a portrait mark: fellow model Maartje Verhoef also managed to have her portrait registered as an EU trademark and, moreover, for many different types of goods and services, including nautical instruments and veterinary services: By the way, the similarity between the portraits of Rozanne Verduin and Maartje Verhoef is quite striking. An interesting exam question: could Maartje Verhoef, relying on her portrait mark, have prevented the registration of the portrait of Rozanne Verduin in opposition, because of the similarity of both portraits, the similarity of the services offered, and the possible likelihood of confusion? And would a cancellation action on the same ground have a chance of success?
Also, the portraits of, for example, Formula 1 driver Max Verstappen and his father Jos are registered (Benelux) trademarks. And one of the most famous portrait brands is perhaps the portrait of Colonel Sanders. Even singer Liam Gallagher once had an EU portrait mark, but it expired years ago.
Is a portrait mark useful?
Not everyone sees the added value of a portrait trademark. In all honesty, there are indeed some objections. For instance, isn’t a portrait mark sometimes descriptive (depending on the goods and services for which it is applied)? And isn’t a portrait, in some cases, a characteristic that gives substantial value to goods? And what about the fact that a person’s face changes (considerably) as the years go by? This does not only have consequences for possible revocation due to non-use, but also for answering the question whether there is a similarity between the registered trademark and the (allegedly infringing) portrait of someone used by a third party, years later.
Moreover, there is, at least in the Netherlands, another way to protect a portrait: through portrait rights. Based on article 21 of the Dutch Copyright Act, every person can oppose the unauthorised use of his or her portrait, if he or she has a reasonable interest in doing so. Everyone can invoke his or her portrait right, without having to register it. This portrait right is included in the Copyright Act, because it can be seen as an exception to copyright, but in fact it mainly concerns a privacy interest.
A long time ago, in the judgment ‘t Schaep met de Vijf Pooten, the Dutch Supreme Court ruled that the commercial interest of famous persons to earn money by exploiting their portrait must also be considered a reasonable interest in the sense of article 21 of the Dutch Copyright Act. In such cases, an important factor in considering whether the portrait may be used by third parties is whether a reasonable payment was offered to the person portrayed. What constitutes a reasonable payment depends on the circumstances of the case. This is also referred to as ‘cashable popularity’. However, this right is reserved for celebrities and famous people only and, moreover, can only be invoked by themselves, as portrait rights are not transferable.
This is one of the reasons why a portrait mark can be interesting. For a portrait mark to be valid, there does not have to be any ‘cashable popularity’. It is not required that the person portrayed is famous, as long as the portrait is distinctive. And once the portrait is registered as a trademark, an injunction and compensation of damages can be claimed for infringing use. Additionally, the portrait mark can also be commercially exploited by someone other than the person portrayed, because a portrait mark is transferable, unlike portrait rights, which can only be invoked by the person portrayed.
Syb Terpstra is a senior associate at bureau Brandeis. He is a specialist in trademark law and music rights (copyright and neighboring/related rights). He also has extensive experience in, inter alia, advertising law, portrait/image rights and commercial contracts (such as licensing agreements and sponsorship agreements).