I want to stop AI from using my face; can my face be registered as a trade mark?

Luke Littler recently made an application to the UK Intellectual Property Office (UKIPO) to trade mark his face across a wide range of services. This application was recently published. We are now in a digital environment where realistic images using faces of individuals can be created, reproduced, changed and used globally at a large scale without consent. This is difficult to control and celebrities/sportspeople, are struggling to keep up.

Under UK law, image rights are not formally protected, however, we are seeing existing law adapt to the new challenges posed by the rapid evolution of technology. In response to AI deepfakes, several celebrities and sportspeople (who heavily rely on their image for brand value), are registering their faces (using a photorealistic image) as a trade mark, in an effort to prevent unauthorised use. This is because they get income from being associated with brands and want to stop any brands associating themselves with them without paying a licence fee. Trade marks are normally used to protect words and logos in respect of certain goods and services, however, it is possible to register more unusual trade marks, such as faces, provided they meet the requirements of distinctiveness and graphical representation. As part of this. celebrities will need to protect their trade marks in relation to the goods/services which they are commercialising. For successful registration, the face must be:

· capable of being represented in a manner that enables the public to clearly determine the precise subject matter of the protection;

· capable of distinguishing the goods or services of one party from those of another; and

· distinctive and perceived as an indicator of origin (rather than decorative or descriptive).

Registering a face as a trade mark would provide the owner with exclusive rights to prevent unauthorised commercial use, including, it’s likely to be argued, its use in AI training datasets.

EU Approach

There are conflicting approaches between the European Union Intellectual Property Office (EUIPO) and its Board of Appeal on whether photographs of faces can be registered as trade marks. The EUIPO has taken refused to register faces as trade marks, while the Board of Appeal has held that a face can be distinctive and registrable. In 2017 the EUIPO Fourth Board of Appeal permitted the registration of model Maartje Verhoef’s face because it was “the image of a specific individual, with her unique facial features” and of distinctive character.

UK Approach

In the UK, the test is whether the face is distinctive and perceived as an indicator of origin by a significant portion of the relevant public. The UKIPO has noted that pictures of famous people are more likely to be considered as mere decoration and lack distinctive character, particularly for goods like photographs and posters. For example, the UKIPO refused Sir Alex Ferguson’s application to register his name for goods which could bear his image, citing lack of distinctive character under the Trade Marks Act 1994 (TMA 1994). Applications for faces that are merely decorative or descriptive could face similar challenges under the TMA 1994 (although see the case of Cole Palmer below).

It is hoped however that the EUIPO Grand Board in the pending Johannes Hendricus Maria Smit v EUIPO case will bring clarification as to the best approach. Dutch entertainer Johannes Smit tried to register his face in relation to a range of goods and services. At first instance, the EUIPO examiner refused to register the mark based on a lack of distinctiveness, and on the basis that the image of the face was descriptive for some of the applied for goods and services. The EUIPO Board of Appeal then referred the case to the Grand Board for clarification on the approach, which will provide a welcomed EU precedent and persuasive UK authority. Footballer Cole Palmer successfully registered his face as a trade mark in relation to a broad specification. Palmer managed to register his face as a trade mark because:

· he used an innovative strategy of applying to protect his identity by registering his name, nickname, face, signature, and even a movement (his distinctive “shiver” goal celebration) across a range of goods and services (including footwear, eyewear, clothing and headwear), which strengthened his brand attributes. The application was structured to cover a broad range of classes, ensuring comprehensive protection. This approach aligns with the practice of registering trade marks for elements that are unique to a celebrity, such as graphical representations or poses (e.g. the Usain Bolt’s silhouette pose); and

· his face was deemed distinctive and capable of distinguishing his goods and services from those of others and the inclusion of unique elements, such as his “shiver” goal celebration further enhanced the distinctiveness of his application.

In conclusion, while it is possible to register a face as a trade mark in the UK, the application must demonstrate that the face is distinctive and functions as an indicator of origin for the goods or services in question.

Should you register your face as a trade mark?

Registering your face as a trade mark shows you have a valuable and active brand which in turn helps structure licensing deals and is an effective deterrent against opportunistic merchandising. Since the legal framework around AI and copyright is still developing, a trade mark is an effective way to avoid unauthorised commercial exploitation. However, the question remains whether non-celebrities can use trade marks to stop their faces

from being used by generative AI. It will be interesting to see how the law will evolve in this area.

How can Briffa help?

Briffa can help you take proactive measures to protect your key intellectual property assets. Our expert solicitors are on hand to advise on the law and its efforts to keep up with the rapidly changing tech world. Just get in touch to learn more.