The Board of Appeal of EUIPO, in its decision of 1st June 2023 in the case R 2305/2022-2, confirmed the decision of the European Office, excluding the possibility of registering an emoji depicting the gesture of a hand as a European trademark.
The application for registration of that sign by a German undertaking concerned services in Classes 36 (property and financial services) and 37 (services in the cleaning and construction sector). However, this request was rejected on the basis of Article 7(1)(b) of the European Union Trade Mark Regulation (EUTMR), which excludes non-distinctive trade marks from registration.
The examiner pointed out that the emoji in question realistically represented a well-known sign that comes from the US sign language and is now internationally known as an 'I love you' hand sign. The EUIPO said that this gesture is universally associated with a symbolic message of affection and love that goes beyond language barriers.
With the decision in question, it was established that emojis, although realistic and universally recognized, do not possess the degree of distinctiveness necessary to obtain approval for registration as a trademark.
According to EUIPO, it was unlikely that a simple pictogram would remain etched in consumers' minds. In fact, as is known, emojis act as a parallel language, providing emotional indications and facilitating the expression of feelings in digital conversations.
In the context of the services in question, the sign is therefore perceived as merely a representation of a positive gesture, an advertising message intended to indicate customer satisfaction with those services.
This finding is in line with established case law on the subject, according to which pictograms such as emblems or smileys are generally used both in advertising and in private communication to express positive feelings, such as joy, consent, enthusiasm or happiness.
Returning to regulatory aspects, it should not be forgotten that the objective of Article 7(1)(b) EUTMR is to ensure that consumers can easily distinguish a product or service from others without risk of confusion.
In the present case, EUIPO considered that the sign proposed for registration was too general and was used in many different contexts, making it primarily a decorative element or a general advertising message that was not perceived by consumers as an indication of the origin of the service. Consequently, the examiner rejected the German company's application for registration.
The examiner's decision was therefore the subject of a recent appeal before the EUIPO Commission, where the applicant argued, among other arguments, that the distinctive character of a sign should also be assessed in relation to the services for which registration is sought, an aspect which the Office had neglected to consider.
However, this argument was not sufficient to change the decision, in fact, the Board of Appeal of the EUIPO, following the arguments already put forward at first instance, pointed out that the target public is familiar with various pictograms, including emoticons and emojis, which is why they will not be perceived as an indication of origin, but rather as generic advertising messages or decorative elements devoid of distinctive character.
The Commission therefore agreed with the examiner's arguments and confirmed its decision.
In particular, the Commission reiterated that the sign in question was mainly used in contexts of positive communication and therefore could not be interpreted as an indication of origin. The Commission also pointed out that the pictograms are devoid of distinctive character, as they are "simple geometric shapes, design elements customary in advertising, stylised instructions on the use of the product or the reproduction of the product itself ".
Thus, even on appeal, the sign in question did not obtain recognition as distinctive and its registration was rejected.
All that remains, however, is to ask ourselves about the future: can this precedent be considered a launching pad for a subsequent registrability of an emoji as a trademark, this time also evaluated in relation to the services offered by the applicant? We'll see...
Originally Published by 29 September 2023
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