Emoji: not a trademark for EUIPO (but a contract agreement for a Canadian Court)

According to the decision of 1^st June 2023 (original German version and English machine translation) by the Board of Appeal (BoA) of the EUIPO, the emoji meaning “I love you” cannot constitute a trade mark.

Background of the case

In 2021 a German company filed application No. 18622650 to register the figurative trademark constituted by an emoji indicating "I love you" in classes 36 (essentially financial services) and 37 (essentially services in the building construction).

By decision of 18 November 2022 the examiner refused the application pursuant to Article 7(1)(b) and to Article 7(2) EUTMR. The Examiner based the decision on the following reasons:

i) the relevant consumer (including the specialist public) would recognise the sign as indicating what is known as an emoticon/emoji, that is a pictogram that refers to an emotional situation;

ii) the sign applied for consists of a realistic (common) illustration of a hand sign with a set thumb. It is a well-known sign that comes from the US sign language and is now internationally known as an ‘I love you’ hand sign. The hand sign generally shows a right hand, but there are also variations with a left-hand hand. The relevant public will therefore simply perceive the sign applied for as a pictogram (emoticon) without distinctive character;

iii) the sign does not enable the consumer to distinguish the services of the applicant from those of other undertakings.

The decision

The Board of Appeal dismissed the appeal and confirmed the refusal of the application on the ground of lack of distinctiveness.

The main function of an emoji is to give emotional indications that are otherwise lacking in animated entertainment. Emojis therefore act as a parallel language that conveys nuanced meaning and facilitates the expression of emotions. They are often associated with positive communication. As such, they are not generally perceived as an indication of origin.

The sign in question is perceived as a general advertising message indicating that consumers will be particularly satisfied with the services offered under the sign. Consumers therefore merely infer from the sign a positive connotation of a general nature, either in the sense of an attractive decoration or in the sense of a general laudatory statement and incitement to purchase. As a simple representation of a positive gesture, the sign does not contain anything that would enable the targeted consumer to perceive it as an indication of the origin of the services.

An Italian cat expressing love

Comment

It worth recall the history of  The Smiley  (see The IPKat here) and an interesting article by WIPO on Emojis and intellectual property law. In general, emojis can be registered as a trade mark, as a design or be protected under copyright caw. It is however challenging for them to display enough creative character because they are basically visuals that reflect an idea with standardized means of communication. Their use to represent a concept may be regarded as descriptive

From another perspective, emojis’ interpretation is important because they not only have the potential to lead you to be misinterpreted but also because they may have a negative legal repercussion. Like a written text, they convey a sentiment as well as a will and can serve as proof. If writing may be the principal act, using or adding to the text images is indeed more critical since the meaning given to them by the sender can differ from the one seen by the receiver who, additionally, can see the emoji in a distinctive way.

In this sense, It is interesting to note that, by decision of 8^th June 2023, the Court of King’s Bench for Saskatchewan (Canada) ruled that the thumbs-up emoji  “👍” can represent contractual agreement. In March 2021, a grain buyer announced that the company was looking to purchase 86 tonnes of flax at a certain price in a bulk text message to customers. During a phone conversation with a farmer, the buyer sent the picture of a contract for the delivery in November of flax and asked the farmer "please confirm flax contract" in a text message. The farmer replied with a thumbs-up emoji. However, the farmer failed to deliver the flax in November, and by that point, agricultural prices had risen. The Canadian court bemoaned that the case led the parties to a far-flung search for the equivalent of the Rosetta Stone in cases from Israel, New York State, and some tribunals in Canada, etc. to unearth what an emoji means and at one point referenced a dictionary.com definition of the symbol. The court added that "Under the circumstances, this was a permissible manner to transmit the two goals of a signature” even agreeing that an emoji is a non-traditional means to sign a document. The court also pointed out that it "cannot (nor should) attempt to stem the tide of technology and common usage" of emojis in ruling that the thumbs-up can be used to enter contracts.