Emoji and Trademarks: the EU Board of Appeal delivers its opinion on the registrability of the “I Love You” sign.

Recently the Board of Appeal of the European Union Intellectual Property Office (EUIPO) was asked to examine and resolve a litigation (R 2305/2022-2) concerning the registrability as a European Union trademark of an emoji. In this article:

The case: registering an emoji as a trademark

On December 16, 2021, a German company took an interesting step in the field of trademarks by filing an application for the registration of an emoji depicting the gesture “I love you”. The application had been filed for services in classes 36 (financial and real estate services) and 37 (services in the field of construction and cleaning).

The choice of such a universally renowned symbol raises intriguing trademark questions. The “I love you” gesture is a symbolic sign of love and acceptance that has transcended language barriers. However, its universality and widespread use could potentially hinder its registration, resulting in a dilemma that questions the intersection between common language and intellectual property.

This issue has the European Union Intellectual Property Office (EUIPO) Board of Appeal facing a complex decision. The application not only affects the applicant company but also reflects a growing trend in the trademark world, let’s see why.

The initial rejection: the problem of emoji distinctiveness

The German company’s audacious attempt to register an emoji as a trademark met with immediate opposition from the EUIPO examiner. Why? The lack of distinctiveness of the sign at issue, as stipulated in Article 7(1)(b) of European Union Regulation No. 2017/1001 (EURMR). This was no small obstacle that shattered the company’s initial ambitions.

The examiner had no doubt: the emoji depicting the “I love you” gesture in the United States Sign Language (ASL), while a realistic and universally recognized illustration, lacked the distinctiveness necessary to be considered eligible for registration. The decision anchored to established case law that pictograms, emoticons and smilies, commonly used to express positive emotions, cannot be considered distinctive of specific goods or services.

The examiner’s approach led the applicant company to appeal, seeking the annulment of a decision that could have repercussions far beyond the individual case. Let’s see what the applicant’s arguments were to counter the rejection.

Can an emoji be chosen as a trademark in the EU?

Opposed to the examiner’s interpretation, the applicant’s opinion was quick to be expressed, challenging the initial refusal with thoughtful arguments. In the German company’s view, the disputed sign was not without merit: it possessed distinctiveness, albeit minimal, which should have been sufficient to overcome the ground for refusal under Article 7(1)(b) of the EUMR.

The applicant did not stop there, questioning the very classification of the sign as a pictogram or emoticon. It pointed out that the unique combination of shapes and proportions, coupled with the universally recognized meaning, made the emoji at issue a separate entity, quite distinct from the generic pictograms or smilies of everyday communication.

The company also rejected the application of the aforementioned case law to the specific case. In its opinion, the sign differed from common pictograms or emoji, which are predominantly used to express generic emotions, and therefore possessed a distinctive character that would allow it to be easily associated with the company, thus enabling clear differentiation in the market. Therefore, the sign would be easily associated with the company allowing it to be recognized among many.

Trademarks without distinctive character according to the RMUE

Article 7(1)(b) of the European Union Trademark Regulation (EUTMR) is the pivotal regulation in the decision made by both the EUIPO and the Board of Appeal. This provision states that signs that “lack distinctiveness” cannot be registered as European Union trademarks.

This provision aims to ensure that registered trademarks are capable of distinguishing the goods or services of an enterprise from those of competing enterprises. The rationale of the provision is to ensure that registered trademarks can function as indicators of the commercial origin of goods or services. Distinctiveness, therefore, is considered an essential element of a trademark’s function and its ability to signal to consumers the origin of goods or services.

This means that if a sign lacks distinctiveness, the public will not be able to identify the company behind the goods or services, nor distinguish those goods or services from those offered by third parties. Consequently, a sign that lacks distinctiveness cannot be registered as a trademark under Article 7(1)(b) of the EUTMR.

The decision of the EU Board of Appeals

After carefully examining the applicant’s arguments and evaluating all relevant evidence and legal considerations, the EUIPO Board of Appeal issued its final decision regarding the registrability of the mark consisting of an emoji depicting the “I love you” gesture.

In its decision of June 1, 2023, the Commission rejected the appeal filed by the applicant, upholding the examiner’s initial decision. In fact, the Commission found that the disputed sign did not possess the minimum degree of distinctiveness required to overcome the ground for refusal under Article 7(1)(b) of the EUTRM.

According to the Commission, the sign applied for would be perceived by the relevant public as a generic advertising message or a purely decorative element, lacking any distinctive character capable of identifying the commercial origin of services. In the Commission’s opinion, the sign depicted a common pictogram, likened to a smiley face or emoticon, used mainly to express positive emotions such as joy, enthusiasm or happiness, but not to identify the origin of specific services.

As a conclusion, the EUIPO Board of Appeal upheld the decision of the EUIPO examiner and dismissed the appeal of the applicant German company, thus rejecting the trademark application. In light of the Commission’s decision, it is always recommended to seek the advice of experienced professionals in the field before proceeding to register a trademark also in order to assess that the designated sign has all the requirements for registration (novelty, distinctiveness and lawfulness).