The Curious Case of an Emoji's Journey Through EU Trade Mark Law

In the dynamic world of trademark law, the European Union (EU) often grapples with the challenge of integrating modern branding strategies within its legal framework. The case "R 2305/2022-2," involving Käselow Holding GmbH’s application to register a hand-held sign emoji as a European Union trademark no. 18622650, presents a unique intersection of digital communication and legal doctrine.

This case not only questions the boundaries of what constitutes a distinctive character under EU trademark law (EUTMR) but also highlights the evolving nature of trademarks in the digital era.

In recent years, there has been a significant shift in the types of symbols and signs that businesses seek to register as figurative trademarks. Digital symbols like emojis, hashtags, and even color schemes used in app interfaces are increasingly at the forefront of branding strategies. This evolution raises questions about how trademark laws, traditionally designed for more conventional signs, adapt to these new forms.

Background of the Case

Käselow Holding GmbH's endeavor to trademark an emoji brought to the fore the discussion about the role of such symbols in the commercial sphere. The trademark application encompassed various services in class 36 and class 37.

The emoji is the only figurative element of the trademark, which we can considered as a central element of their brand identity. This approach aligns with a broader trend in marketing, where businesses increasingly utilize digital and unconventional symbols to connect with tech-savvy consumers.

The initial refusal of the European Union Intellectual Property Office (Office) to register the emoji as a trademark, citing the Article 7(1)(b) of the EUTMR:

“
The following shall not be registered:
(b) trade marks which are devoid of any distinctive character;
“

The examiner's stance was that the emoji, widely used in everyday communication, did not possess the requisite distinctive character to function as a trademark and that “the sign applied for consists of a realistic (common) illustration of a handsign 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’ handsign”.

Arguments and Appeal¹

The applicant’s appeal brought into question the Office’s interpretation of ‘distinctiveness’. Its argument was predicated on the belief that, in the context of their services, the emoji can transcend its common usage and acquired a distinctive character. The applicant's statement that the sign was neither a smiley, an emoticon, nor a gesture but rather at most a pictogram, did not sway the examiner's assessment. The applicant's stance, backed by references to Wikipedia articles, did not adequately demonstrate that the sign could be distinguished from other graphic representations used in everyday communication.

The legal discussion pivoted around the interpretation of Article 7(1)(b) EUTMR, specifically how it should be applied to modern symbols like emojis. The case required a nuanced understanding of the law, balanced against the evolving nature of communication and expression.

The decision to refuse the trademark application was grounded in Article 7(1)(b) EUTMR in conjunction with Article 7(2) EUTMR. The examiner argued that for a sign to possess the distinctive character necessary for a trademark, it must be perceived as such by the relevant public in relation to the goods or services for which protection is sought. In this case, the sign – an emoji – was seen by the examiner as an "emoticone," a pictogram that conveys an emotional situation, not an indication of a commercial origin.

According to the decision most pictograms lack a distinctive character as they are often basic geometric shapes, typical design elements used in advertising, stylized instructions for product use, or representations of the product itself. In the present case the sign in question, associated with financial services (Class 36) and building cleaning (Class 37), is likely to be perceived as a general advertising message. This perception implies that customers, due to their satisfaction and fondness for the services offered under this sign, will recall them positively.

Therefore, the consumer would likely perceive the emoji as a general positive connotation or an attractive decoration, rather than associating it with a specific commercial origin.

The Board of Appeal aligned with the examiner's reasoning, citing precedents and decision-making practices indicating that emoticons and similar pictograms are generally not perceived as an indication of origin. They are often connected with positive communication and used in private contexts to express emotions like joy, consent, enthusiasm, or happiness. This usage makes them ill-suited for indicating the origin of goods or services, as they are primarily interpreted as abstract promotional statements or advertising slogans, rather than indicators of commercial origin.

In conclusion, the decision to dismiss Käselow Holding GmbH’s appeal was rooted in a comprehensive understanding of how the relevant public perceives such symbols. The case underscores the challenges faced by non-traditional trademarks in establishing distinctiveness, particularly in a digital context where emoticons and emojis are ubiquitous and typically associated with personal, rather than commercial, expression.

Diogo Antunes is a Trademark and Patent Attorney and Legal Manager at Inventa. Email: dantunes@inventa.com

¹ For more information please consult the case here: https://euipo.europa.eu/eSearchCLW/#basic/*///number/2305%2F2022