The EUIPO Board of Appeals, in the decision given on June 1st 2023 in case R2305/2022-2, excluded the registrability as a European trademark of the sign constituted by an emoji representing a hand gesture, thus confirming the decision of the examiner of the European Office.
Emoji and distinctive character of a EU trademark
The registration of the sign at issue, requested for some of the services in Class 36 (relating, among others, to real estate and financial services) and in Class 37 (relating also to services in the field of cleaning and construction), was in fact entirely rejected ex article 7(1)(b) of the European Union Trademark Regulation (EUTMR) pursuant to which trademarks lacking of distinctive character are excluded from registration.
The examiner pointed out that the requested sign was a realistic illustration of a well-known gesture, recognized internationally as “I love you”, not suitable, as a simple pictogram, to make an impression in the consumer’s mind. As a matter of fact, pictograms, such as symbols or emoticons, in line with the established case-law, are generally used in advertisement and private communication to express positive feelings, that is why the consumer will interpret them as purely decorative elements, not suitable to serve as origin indicators.
The aim of art. 7 (1)(b) of the EUTMR is in fact to guarantee that the consumer or the final user is able to distinguish a good or services from goods or services of a different origin without any likelihood of confusion.
In this case, the sign for which the registration was requested was too generic and used in such a variety to constitute uniquely a decorative element or a general advertising message that is why the examiner rejected the registration.
The Decision of the EUIPO Board
The decision was therefore appealed before the EUIPO Board, asking for its entire nullity. The appellant, among other argumentations, claimed that the distinctive character of a sign should have been evaluated also with regards to the services for which the registration was requested, exam that the Office failed to carry out.
The Board, however, agreeing with the argumentations of the examiner, confirmed the decision.
In particular, it was reaffirmed that such sign was mostly used in communication, generally positive, and that therefore could not have been perceived as indication of origin.
Even in relation to the contested services, therefore, the consumer would have perceived it more as a generic advertising message.
It was noted that the pictograms (which include emoticons) are in fact perceived by the public as a general advertising message or as purely decorative elements lacking of any distinctive character even in consideration of the simple geometrical shape.
Therefore, no distinctiveness was recognized to the sign at issue, not even during the appeal, which, consequently, was rejected.
Giulia Mugnaini