Il viso di modella per ‘services of mannequins and photo models for publicity or sales promotion’ in class 35 and ‘model and mannequin services for leisure or recreational purposes’ in class 41, è sufficientemente distintivo?
L’ufficio UE dice di no in primo grado (art. 7.1.b EUTMR), di si in appello.
Dal 4° Board of appeal EUIPO 30.10.2023 , caso R 1266/2023-4, Roos Abels Holding B.V. (segnalazione e link di Marcel Pemsel in IPKat, che segnala altra decisione con motivaizone uguale in fattispecie sostanzialmente uguale):
<<19 It is true that, although special or original characteristics are not criteria for the distinctive character of a trade mark, the mark in question must enable the public to distinguish the goods and services in question from those of other undertakings or persons (04/07/2017, T-81/16, a pair of curved strips on the side of a Tire, EU:T:2017:463, § 49).
20 The Board of Appeal considers that this is the case with the sign applied for. The image at issue, as also indicated by the examiner, consists, taken as a whole, of the faithful representation of a woman’s head/face, in common colours and on a common background.
Contrary to the view taken by the examiner, that image does indeed enable the relevant public, consisting of the general public and a specialised public, to distinguish the services in question from those of a different commercial origin and, in particular, as originating from the specific person depicted.
21 Themere fact that a photograph is a natural faithful representation of what has been depicted does not mean that that representation cannot be perceived as a trade mark, all the more so since the image in itself does not say anything about the services sought. The sign applied for relates, undoubtedly, to the representation of the face of a particular person, with its unique faces, that is to say, its specific external features and that is to say, in the form of a passport photograph. In addition to (inter alia) the surname and first name, 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 distinction from other persons. Whether the person can actually be named when viewing the image because it is known to the
relevant public does not alter this.
22 In the view of the Board of Appeal, the representation at issue is therefore capable of fulfilling the essential function of a trade mark in order to distinguish the services applied for from a different origin, as repeatedly held in relation to comparable trade marks. The Chamber refers in this regard to the decisions of 16/11/2017, R 2063/2016-4, device (PHOTO) OF THE HEAD OF A Woman, § 37; 23/10/2019, R 2574/2018-1, FOTOGRAFÍA AND COLOR DEL ROSTRO DE UNA PERSONA, § 14-15; 19/05/2021, R 378/2021-4, WEERGAVE OF THE face OF A PERSOON (fig.), § 17; 19/05/2021, R 468/2021-4, WEERGAVE OF A PERSOON (fig.), § 17). All those decisions concern similar figurative marks for, inter alia, similar or even identical services in Classes 35 and/or 41.
23 That finding of the Chamber is not affected by the fact that, as the examiner points out, many other faithful images of faces are conceivable from women and men. They will each represent a unique representation of that particular person, with his/her own specific external characteristics. In this context, the existence of double-riders and identical multiple births may be disregarded as exceptional and exceptional. Moreover, that argument could be put forward, also wrongly, against any other type of trade mark; how many words, patterns, images of animals, etc. do not exist?
24 Theexaminer’s argument that, with regard to the services requested in Classes 35 and 41 of mannequins and photomomodels, the image would represent only the person providing those services, indicates, on the contrary, that the image may be perceived as a means of distinguishing the commercial origin of those services. The relevant public will perceive the sign as a means of identifying the origin of the services in question, namely that they originate from the person depicted, with whom the sign fulfils the essential function of a trade mark (16/11/2017, R 2063/2016-4, device (PHOTO) OF THE HEAD OF A Woman, § 24-25; 19/05/2021, R 378/2021-4, WEERGAVE OF THE face OF A PERSOON (fig.),
§ 19; 19/05/2021, R 468/2021-4, WEERGAVE OF A PERSOON (fig.), § 19).
25 Similarly, the examiner’s finding that it is not unusual for the services applied for in Classes 35 and 41 that they are presented with the representation of the person providing the services does not call into question the conclusion that the mark applied for has distinctive character. Apart from the fact that such a finding, which, moreover, is unsubstantiated, is consistent with the ground for refusal laid down in Article 7(1) (d) EUTMR, which is not at issue in the present case, the representation appears in the mark applied for only in its kind. Nor is there any question that the use of precisely the mark applied for is customary for the services in question.
26 Finally, the comparison of examiner with the case-law cited above is flawed. The decision of 24/07/2001, R 341/2000-1, Figurative MARK (Doll’s head), which was more than 22 years old, concerns the application for a figurative mark relating to a stylised representation of a popp head with the typical characteristics of all the new-born babies similar, applied for dolls and toys in Class 28. The decision of 01/09/2015, R 2993/2014-5, device OF A SQUAIRE WITH FOUR PICTURES (fig.) concerns the application for a figurative mark relating to a collection of four photographs showing as many as five different persons of
different ages applied for for goods and services in the medical sector.
27 Contrary to the view taken by the examiner, the mark applied for does not infringe the absolute grounds for refusal set out in Article 7(1) (b) EUTMR.
28 It is therefore not necessary to examine whether it has acquired distinctive character through use in relation to the services in respect of which registration is sought pursuant to Article 7(3) EUTM>>
La soluzione data non è condivisibilissima (pur in un caso non facile), sia per la distiontività sia per l’individuaizone del consumatore diriferimeno (non è il general public)
La fotografia di in viso determnatonon è perceputo come indicaizone dell’origine aziendale