Giving the thumbs down emoji to trademarks.

The European Union Intellectual Property Office (EUIPO) recently decided that simple emojis cannot be trademarked under European law. Here’s what happened:

Background emoji

In December 2021 a German company Käselow, sought to have a commonly used emoji registered as their trademark. The mark in question was an image of a hand sign commonly understood to mean ‘ILY’ or ‘I Love You’ in American Sign Language (ASL) and commonly used on emoji keyboards:

Käselow wanted to make this emoji their own and use it to represent their brand. But, the trademark examiner initially rejected the application on the basis that the mark lacked a ‘distinctive character’ necessary for a member of the public to associate it with the company. This is an essential element of trademark law in virtually every jurisdiction in the world, and is a common point of failure for any trademark application.

Distinct emoji

In short, for a mark to be distinctive it needs to remind a person of the entity that is seeking its registration. The idea is that when a consumer forms an opinion about a prior purchase, they will then be able to recall the mark and use it to discern that product or service from those offered by a competitor. In this way registration is essentially an official acknowledgement that the mark brings to mind the company itself, and offers them a simple process to defend it.

This underlying principle behind trademark law therefore necessitates that a mark needs to have some distinctive quality about it. Overly simple or generic marks are therefore usually incapable of being distinctive and will not be registerable. Similarly, marks that are in such common usage that they cannot be specifically associated with a brand or entity will lack that distinctive quality.

Not smiling and no heart eyes emoji

Käselow appealed this decision, arguing that outside of the ASL community, the hand sign emoji doesn’t immediately bring ‘I love you’ to people’s minds. They also pointed out that ‘ILY’ in ASL is usually done with the right hand, while their emoji showed the left hand.

But the EUIPO Board of Appeal rejected Käselow’s arguments. They agreed with the examiner, saying that most people understood the sign to mean ‘I love you.’ They also thought that people wouldn’t distinguish between left and right hand signs, even if they weren’t familiar with ASL. Essentially, they believed that most people would see it as a simple emoji and not associate it with the company.

The Board also said that Käselow’s use of the emoji was more like decorative advertising to express positive feelings about their services, and it wasn’t strongly connected to their branding.

What’s next emoji?

So, this ruling shows that in Europe, simple emojis can’t be trademarked because they’re seen as a form of language. The Board considers emojis as similar to written words, used to convey meaning and express emotions. They also believe that emojis lack distinctiveness because they are basic shapes.

It’s worth mentioning that this isn’t the first time someone tried to trademark this emoji. In the United States, Gene Simmons from the band Kiss tried to do the same thing but eventually gave up. He claimed he invented the symbol below as a rock and roll gesture in 1974:

These cases demonstrate the various challenges involving emojis and trade marks, particularly in terms of showing distinctiveness in the traditional ’emotional’ emojis. Delete ‘confused emoji’ and replace with ‘like emoji’.