Dr Juliette Boynton

August 2023

The application was rejected by the Examiner under Article 7(1)(b) EUTMR which states:-

The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character.

The Examiner considered the mark would be recognised as an emoji representing an emotional situation, and specifically that the mark represents the international sign language hand sign for “I love you”.  As a consequence, the sign is devoid is distinctive character and not capable of acting or being recognised as a trade mark.

The Applicant tried to convince the Examiner that the mark should be registered arguing that the mark differed from the international sign language symbol for “I love you” and thus would not be recognised as this symbol.  The international symbol is intended to be a combination of the letters “I”, “L” and “Y”, which are represented by extending the little finger, index finger and thumb, and little finger and thumb respectively, in each case tucking in the other fingers.  Taken together this represents the little finger and index fingers raised or extended, the ring and middle fingers tucked in, and the thumb pointing out.

The mark has the little finger and index finger raised, the ring and middle fingers tucked in and the thumb pointing out, but also has the end of the thumb raised, which according to the Applicant makes it look more like a J.  The Applicant argued that this difference means that the mark is not recognised as the international symbol and not as an emoji but as a distinctive mark capable of acting as a trade mark.  The public do not analyse signs for their similarity or otherwise to any other sign, but would simply see this mark as a sign having no known meaning.  As a result, the mark is distinctive of the services and should be registered.

The Examiner rejected this argument, maintaining that the mark lacked a distinctive character, and the Applicant appealed.

The Appeal Board analysed the case and mark and noted that in order to act as a trade mark a sign must be capable of distinguishing the goods or services of one undertaking from that of other undertakings, and in order to do this the sign must be distinctive.  Signs that are descriptive are devoid of distinctive character and there are other reasons why a sign may lack distinctiveness.  The distinctiveness of a sign must be assessed in relation to the goods and services for which registration is applied, and the relevant public who will be the consumers of the goods and services.   The general public are taken to be reasonably well informed, reasonably observant and circumspect and where goods and/or services have a higher value, the relevant public are likely to more particular attention.

The Board also considered that the sign is a realistic representation of a hand with the middle and ring fingers folded in, the little and index fingers extended and the thumb relaxed.  As such, the Board concluded that the sign is an emoji, and indeed an emoji of the international sign language symbol for “I love you”.  The Board acknowledged that there may be a minor difference between the standard sign and the mark, but that the difference is small and due to imperfect recollection is unlikely to be noticed.

Emojis are intended to provide an emotional reference and consequently act as a parallel or complementary language.  As such they are not perceived as an indication of origin, as required by a trade mark.  In some ways emojis are equivalent to tag lines that convey abstract promotional statements that are perceived as advertising slogans that could be used by several different parties.  This further confirms that they are not an indication of origin.

The Board considered the sign in relation to the services of the application and considered that the signs will be perceived by the relevant public as a general advertising message, suggesting that customers will be particularly satisfied with the services and thus think of the services with loving affection in view of their satisfaction therewith.  The signs are therefore laudatory in relation to the specific services and thus again, not an indication of origin.

The Board thus upheld the decision to refuse the application on the grounds that the sign cannot act as a trade mark as it lacks the necessary distinctive character.

The overall conclusion here is in line with other decisions confirming that a sign needs to be perceived as a trade mark by the public to be registrable and this does not include slogans, tag lines and other generally laudatory statements or trade get up.  However, this provides the confirmation that the prohibition also applies to emojis.