A picture is worth a thousand words – and therefore non-distinctive

There are pictures of moments in time that have become iconic and are known around the world. Think of the kiss of a soldier and a nurse in Times Square, the picture of Buzz Aldrin on the moon taken by Neil Armstrong or the Tank Man.

The duration of copyright (or related right) in these pictures is limited and it is understandable that the photographers or their successors try to extend the protection by other means, such as trade mark protection. The German Patent Court recently denied registration of such a photograph as a trade mark.

Background

On 23 November 2020, an individual applied for registration of German trade mark no. 3020200255902 for the following figurative mark:

The application covered goods in classes 16 (printed matter; photographs; stationery; office requisites; bookbinding materials; instructional and teaching materials), 18 (luggage; carrying bags), 21 (glassware, porcelain and earthenware; household and kitchen utensils and containers) and 25 (clothing).

The applicant is the granddaughter of the photographer who took the picture. She claimed to own the rights to it.

The German Patent and Trade Mark Office rejected the application for lacking distinctiveness. The examiner found that the sign consists of the picture named ‘Sprung in die Freiheit’ (‘Leap into freedom’). It was taken on 15 August 1961 in Berlin and shows the 19-year old border policeman Conrad Schumann, who escaped from East Berlin to West Berlin by jumping over the barbed wire fence separating the two parts of the city. The picture is part of the Memory of the World Programme of UNESCO since 2011.

The examiner argued that the goods can be merchandise or memorabilia, which may be sold in the vicinity of, for instance, the Berlin wall museum. On these goods the trade mark would be perceived as a motif only. As regards ‘printed matter; photographs; instructional and teaching materials’ the sign would be understood as referring to the topic or theme of those goods.

Additionally, the relevant public would perceive the sign only as the representation of a well-known picture and a means of advertising but not as an indication of the commercial origin.

The applicant appealed.

The German Patent Court’s decision

The German Patent Court dismissed the appeal, confirming that the sign lacked distinctiveness (case 29 W (pat) 509/21).

The applicant relied on the case law according to which portraits are, in principle, deemed to be distinctive and non-descriptive. She also argued that the photograph is licensed for various publications, including for newspapers, school books and postcards. Since the unauthorized use of the picture increased, the applicant sought trade mark protection in order to obtain damages and injunctive relief if identical or similar pictures are used for identical or similar goods. The applicant further argued that she already has a monopoly on the use of the picture, which is why trade mark protection cannot be denied on grounds that registration would grant an unjustified monopoly.

The German Patent Court held that figurative marks are subject to the same requirements as other types of marks. If the sign consists of the real-life picture of an identifiable person, it is to be treated the same way as word marks consisting of a name. They are, in principle, distinctive.

An exception to this rule are pictures of famous people. They are considered to be non-distinctive if there is a thematic connection between the person and the goods or services or if the person would be perceived merely as a means of advertising.

The judges also mentioned that works of art cannot be deemed non-distinctive just because the term of copyright protection has expired and they are in the public domain.

On that basis, the German Patent Court agreed with the examiner’s finding that the picture and its origin are known to the average consumer in Germany. The relevant public would recognise the photograph only as such and as a motif or information about the goods. Pictures of historical moments are often used to illustrate the topic or theme of certain goods such as books. They are also printed on posters, shirts, bags or mugs as motifs.

The applicant relied on the AS v Deutsches Patent- und Markenamt judgment of the Court of Justice of the EU (case C‑541/18, IPKat here). She argued that the sign can be used in a way that it will be perceived as an indication of the commercial origin. The judges held that, due to the picture’s symbolic meaning, it is most likely to be used on the outside and front side of the goods but not on labels or the underside of a mug. Use on the outside or front side of goods would not be perceived as indicating the commercial origin.

The applicant’s argument relating to her copyright was dismissed because other IP rights that might subsist in the sign in question are not relevant for assessing the distinctive character.

Comment

The decision confirms the principle that a sign may be registered as a trade mark even though it enjoys copyright, design or any other protection, as long as there is no absolute ground for refusal. While photographs of a person’s face are considered to be inherently distinctive even for model services (IPKat here), the same is not true for pictures that include other elements, such as the one depicted above. Their meaning often goes beyond the specific scene and this meaning is likely to be found descriptive. As a consequence, trade mark applications for these pictures can be expected to be rejected as non-distinctive.

An interesting question is whether pictures of historic moments are protected by copyright. The Court of Justice of the EU held that copyright protection requires the work to be the author’s own intellectual creation that is the result of free and creative choices (summary of the case law on The IPKat here). For many of the pictures of historic moments it seems to be the case that the photographer just happened to be at the right time in the right place and the only choice they had was whether to take the picture or not. Therefore, photographers might have to resort to related rights for ‘simple’ pictures, which are allowed but not harmonized in the EU. An overview of these rights for France, Germany and Italy can be found here.