When Emoticons make the Trademark laugh

When Emoticons make the Trademark laugh Being symptoms of the language revolution in the Internet era, Emoticons, a sort of “digitalized emotions”, have been face with Trademark Right. Emoticons are sequences of characters that describe emotions, feelings or sensations in a written speech. Widely used nowadays on social networks, their paternity is still a subject of debate.  Although the idea of drawing a smiling figure goes back a long way, it seems that the first person to use the smiley face per se was the New York Herald Tribune in 1953 during an advertising campaign. At that time, however, no one attempted to protect the smiling little figure.

A suspicious smile for the brand

Emoticons have become an inevitable part of our society, and it is therefore only natural that companies have taken an interest in them. Widely used in the world of marketing, as evidenced for example by McDonald’s advertising campaign, many companies have attempted to acquire brand rights over these sequences of characters, which are meant to express the emotions of their emitters. Intellectual property law was then questioned, mainly with regard to the distinctive character – necessary for the registration of a trademark – of these totally trivialized signs. An interesting way of analyzing this point is by looking at the case law in recent years in Europe but also in the United States.

The United State, more prone to registration as a trademark

The company Despair. Inc. (of the satirical site despair.com) created the buzz by registering the “: – (” in the year 2000 as a trademark and announcing its intention to sue the 7 million users who would violate it. The site later announced the satirical scope of this threat, which was intended to highlight certain aspects of intellectual property that were considered absurd. Despair. Inc particularly criticized the monopolization of already trivialized signs by certain companies. What, in fact, make you smile… However, this event highlighted an interesting point: such a registration had been totally tolerated by the United States, which did not seem to be hindered by a potential lack of distinctiveness or by the fact of applying an intellectual property right on a sign belonging to the public domain.

A less smiling Europe…

First of all, we have to look at France, where, in 1971, history smiled at the young entrepreneur Franklin Loufrani. He then registered a stylized figure named “Smiley” as a trademark and created The Smiley Company, now based in London and owner of the yellow smile rights. Faced with numerous disputes, Loufrani’s brand never faded, for example, condemning the AOL service provider in 2005 for exposing a smiley on its home page or, in 2006, the Pier Import furniture chain for marketing “smiling balls”. Courts have each time, validated the distinctive character of the smiley and ruled that no trivialization of the sign prior to registration could be proved. Is the yellow mark infallible? Registered in more than 100 countries, there is no indication that foreign courts will be as lenient towards her in future disputes…

Doubts are all the more convincing as the European courts have been much less inclined to record emotions. Many courts around the world have been reluctant to consider such registration. Indeed, EUIPO rejected Pricer AB’s application for registration of the sign “; – (” (EUIPO, 3rd Octobre 2011, ref. no. V2909 IEUOO/AD/cer), arguing in particular that it was contrary to the public interest for a company to have a monopoly on such an everyday sign. It also raised the lack of distinctiveness of the sign. This decision was followed by the German and Finnish courts concerning other emoticons

Whether French courts will align themselves with these latter case law remains to be seen.

Dreyfus & Associés has experts in trademark law, as well as in national, European and international trademark registrations. Dreyfus & Associés is the ideal partner to support you in this process of securing and updating your intellectual property rights.