Frida Kahlo
photos and
US copyright.
Frida Kahlo
photos and
US copyright.
of
Is a foreign copyright certificate sufficient to have an EU trademark declared invalid? Who decides whether a work is protected by copyright in the EU – the office in the country of origin or the EUIPO itself? Furthermore, what happens if both parties claim to be the earlier creator?
What is it about?
In the center is an EU figurative mark showing a stylized female figure with the typical features of Frida Kahlo: eyebrows that have grown together, dark hair pinned up and a floral decoration on her head. The initials “FK” can also be seen. The trademark was applied for in 2019 and registered in 2022 for the categories of cosmetics, electronic devices and jewelry.
The owner is a descendant of the artist based in Mexico. The trademark was opposed by the Frida Kahlo Corporation from Panama, a company that manages the commercial exploitation of Frida Kahlo’s name and image. The company based its application for invalidity on earlier copyrights, a minimalist illustration registered in the USA and two works registered in Mexico.
The piquant thing is that both sides claim to be the earlier creator of the respective representation. The trademark owner refers to its own work registration in Mexico from 2014, which predates all of the applicant’s laws.
What did the first instance court decide?
The Cancellation Division of the EUIPO ruled in favor of the Frida Kahlo Corporation and declared the trademark invalid in June 2025. Their reasoning: The figurative mark was an unauthorized transformation of the applicant’s US copyright . The two depictions had clear similarities, in particular the simplified frontal view of a face with fused eyebrows, black hair and floral decorations. Under Spanish copyright law, such a transformation was sufficient to infringe the author’s laws.
Why does the Board of Appeal annul the decision?
In its decision of 03.03.2026 – R1372/2025-2, the Board of Appeal annulled the decision of the Cancellation Division of the EUIPO. The Board of Appeal is offended by a fundamental examination error of the Cancellation Division. The Cancellation Division never independently examined whether the applicant’s illustration even meets the quality of a copyright-protected work according to EU standards. Instead, it apparently concluded from the mere existence of a US registration certificate that the work was protected.
In the opinion of the Chamber, this is not sufficient. It is true that a foreign registration certificate can prove who is the owner and when the work was deposited. However, the decisive question of whether the work has the necessary originality to be protected in the EU must be answered by the EUIPO itself.
According to the case law of the European Court of Justice, a work is only protected if it represents its author’s own intellectual creation, i.e. if it is based on the free and creative decisions of the creator. It is precisely this test that the Cancellation Division skipped.
In addition, there is a second error: The Cancellation Division did not assess the evidence provided by the trade mark proprietor regarding priority in time. The latter had submitted documents to prove that its work dates back to 2014 and is therefore older than all the laws claimed by the applicant. This issue is of central importance for the outcome of the proceedings, but was not dealt with in the first instance decision.
What happens next?
The Cancellation Division must now re-examine the case. First, it must clarify whether the US illustration is a work within the meaning of EU copyright law. If it answers this question in the negative or rejects the nullity application on the basis of US law for other reasons, it must then examine the two Mexican copyrights additionally asserted by the applicant.
Conclusion
The decision has significance beyond the individual case for all those who attack EU trademarks using older copyrights or wish to defend themselves against such attacks.
Anyone wishing to have an EU trademark declared invalid on the basis of a copyright should make a substantiated presentation on the originality of the work from the outset. Although a registration certificate – regardless of the country – is a useful piece of evidence, it is no substitute for demonstrating the author’s own creative contribution. This hurdle is unlikely to be trivial, especially in the case of stylized or minimalist depictions of well-known personalities.
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