NATIONAL LAW UNIVERSITY, JODHPUR

Emojis under Trademark Law: Global Trends Analyzed

(Submission of project towards partial fulfillment in the subject of IP Dispute
Resolution)

Submitted by: Submitted to:

Sarvagya Verma Mr. Arunabha Banerjee
BBA LLB. (IPR Law Hons.) Faculty of Law
Semester X National Law University,
Jodhpur
1745
 Introduction

“The article "Emojis under Trademark Law: Global Trends Analyzed" offers a detailed analysis
of the legal status of emojis as trademarks in different jurisdictions around the world. The study
begins with an introduction that outlines the purpose, scope, and the methodology of the entire
analysis. This summary section of the piece gives an insight into what the entire article
encompasses. Further, the article focuses on the importance of trademarks in general and
subsequently, trademarks of emojis. The focus shifts to the legal recognition of emojis as
trademarks and attorneys who have already recognized them as source identifying. Given that
emojis have taken over the 'world of internet marketing' - not literally - it's interesting to note
how attorneys are ready for changing applications or practice. Also, a discussion on the
challenges in registering emojis as trademarks has been discussed with the principal concern
being the Internet Corporation for Assigned Names and Numbers (ICANN) not allowing the
registration of emojis as domain names. Further, it looks at the issue from the ICANN's
standpoint and how that may affect the future of the application of emojis as trademarks. The
author goes a step further to give a detailed look at how emojis have appeared in case law over
time; for example, Funboy, a company that licenses products to HBO, products include a fun
inflatable called the 'white walker' and the company tried to register a trademark with the 'white
walker' name but the application was refused because the emoji was used as an ornamentation.
Finally, the global trends in emoji trademark cases; analyzing the statistics and the latest studies
on emoji usage and products around the world. The article concludes by looking at some of the
potential issues in the future and how attorneys may have to adapt their practice given the
proliferation of social media and clearly, the rise of emojis in this context. The article would
appeal to a wide readership but particularly, to anyone involved in intellectual property law or
brand development. The use of case studies, examples, a clear structure, and logical progression
of points makes it easy for the reader to follow the article's key themes and ideas.”
 What are ‘emojis’?
“Emoticons are tiny symbols used in digital communication to convey thoughts or emotions.1
They serve various communicative functions, acting as substitutes or complements to words,
expressing emotions, and more. Unlike emojis, which can be animated, emoticons, like the
classic "smiley" (e.g., :-), consist of keyboard characters. Emojis have a broader range of
depictions, being able to represent almost anything, whereas emoticons are restricted to keyboard
characters.

There are two main types of emojis: Unicode-defined emojis and proprietary emojis.

Unicode-defined emojis are standardized by the Unicode Consortium, which assigns each emoji
a unique number, a black-and-white shape outline, and a brief description. This standardization
allows emojis to be recognized across different platforms. However, the visual appearance of
Unicode-defined emojis varies among platforms due to each platform implementing them
differently. For instance, Google may use a "blob" shape for face emojis, deviating from the
typical circular shape. Even when platforms attempt to follow Unicode's definitions, variations
exist, such as the placement of cheese in the burger emoji.

Proprietary emojis, also known as "stickers," are platform-specific and do not share Unicode-
defined numerical values. When sent outside the platform, proprietary emojis may appear as

1
Professor of Law, Santa Clara University School of Law, California. http://www.ericgoldman.org.
egoldman@gmail.com. A version of this article was initially published in WIPO Magazine, June 2018, pp. 32-36,
http://www.wipo.int/wipo_magazine/en/2018/03/article_0006.html. This article is based on Eric Goldman, Emojis
and the Law, 93 WASH. L. REV. 1227 (2018), available at https://ssrn.com/abstract=3133412.
blank squares, indicating unrecognized characters. Platforms or individuals may create
proprietary emojis, even incorporating branded emojis, like Twitter's hashtag-triggered emojis or
celebrity sets such as Kim Kardashian's "Kimoji." Unicode does not adopt emojis covered by
third-party intellectual property, but platforms may produce them independently.2"

2
The Making of My Kimoji, https://www.kimkardashianwest.com/behind-the-scenes/523-kim-kardashian-making-
my-kimojis/.
 Emojis and consideration for Trademark

“Irrespective of whether emojis are eligible for copyright protection, they can potentially be
safeguarded as trademarks, particularly when they serve to distinguish goods and services in the
market. This could result in multiple entities holding trademark rights for the same emoji
symbols across different product categories. It is observed that numerous emojis or similar
symbols have already been registered as trademarks.3

However, the requirement of "use in commerce" for trademark protection may pose a challenge
for certain emojis. Platforms, for instance, may not fulfill this requirement when providing free
emoji sets for users to incorporate into messages. Additionally, if an emoji is utilized merely for
its dictionary meaning, such as in cases where a company seeks trademark registration for a
combination like "Bob‟s" plus a car emoji, it may be deemed descriptive and may not qualify for
trademark protection.

The potential for trademark protection for widely used emojis introduces complexities for
platforms. To mitigate the risk of trademark infringement, platforms might intentionally design
emojis to avoid substantial similarity with protected trademarks, even if the platforms are not
commercializing the emojis and are simply offering them to users. This strategy to sidestep
potential trademark issues exacerbates the challenges associated with the proliferation of
copyrighted emojis.”

3
Eric Goldman, Trademark Registrations for Emojis, TECH. & MKTG. L. BLOG (June 12, 2017),
http://blog.ericgoldman.org/archives/2017/06/trademark-registrations-for-emojis.htm.
 Emojis and their Protection: Indian Landscape

“In India, much like in various other legal jurisdictions, the feasibility of trademarking icons is
contingent upon their uniqueness and the context of their application. Although the Indian
Trademark Act doesn't explicitly address icons, the standard principles for registration are
applicable.

To qualify for trademark registration in India, an emoji must adhere to general criteria,
encompassing distinctiveness, non-deceptiveness, and the prevention of potential confusion
among the public.”

Key considerations for trademarking icons in India include:

Distinctiveness: The emoji should possess a distinct character capable of distinguishing the
goods or services of one business from those of others. A stylized or uniquely modified emoji
stands a better chance of being considered for trademark registration.

Non-Deceptiveness: The emoji must not mislead the public or create confusion regarding the
nature, quality, or geographical origin of the represented goods or services.

Use as a Trademark: The emoji must be actively used or intended to be used in commerce as a
trademark, signifying its role in identifying and differentiating the goods or services of a specific
enterprise.

Trademarking a basic emoji in India can be challenging due to their widespread use and
standardized designs, unless the emoji is part of a larger logo or possesses a unique design,
making it a distinctive brand identifier.

Companies aspiring to trademark an emoji would likely need to prove that the emoji, through its
unique design or application, has acquired distinctiveness and is widely recognized by consumers
as indicative of the source of goods or services.

While there may be instances where businesses have successfully registered trademarks in India
involving icons or inspired by them, especially within logos or brand designs meeting trademark
protection criteria, each application undergoes a case-specific evaluation. Factors such as the
specific design, usage context, and the represented goods or services are considered in the
assessment process.4

Emojis and their Protection: European Landscape

The Second Board of Appeal of the European Union Intellectual Property Office (EUIPO)
recently determined that, as a general principle, emojis do not function as indicators of origin
and, consequently, do not qualify for trademark protection. This stance contrasts with recent
developments in EU case law, exemplified by the EU General Court's decision allowing
McCain's EU registration featuring a smiley face shape to remain valid.

In rejecting the application in question, the EUIPO Second Board of Appeal asserted that the
average consumer is familiar with a multitude of pictograms, including emojis and emblems,
commonly used in private communication to convey positive emotions like joy, consent,
enthusiasm, or happiness. According to the board, these pictograms, encompassing emojis, are
typically perceived by the relevant public as general advertising messages or decorative elements
lacking distinctive character. This analysis delves into the implications of the decision.

Background of the case

A German company called Käselow Holding Gmbh (Käselow), in December 2021, applied to
register the figurative mark below as a European Union Trademark (EUTM).

The application sought protection for various services in Classes 36 and 37, encompassing real
estate consultation, financial services related to real estate, real estate brokerage, cleaning of
buildings, building refurbishment services, and maintenance of buildings. However, the EUIPO
Examiner rejected the application in November 2022. The Examiner argued that the proposed
sign, resembling an "I love you" hand sign from US sign language, was perceived as a common
emoticon lacking distinctive character. Despite similarities to the McCain case, the Examiner

4
Attention Required!, Cloudflare https://bytescare.com/blog/are-emojis-trademarked.
 contended that the simple smiley shape couldn't indicate a specific origin of goods or services.
Instead, consumers would interpret it as a positive, decorative element or a general expression
encouraging purchases.

In response, Käselow appealed the decision on November 24, 2022, asserting that the everyday
use of emojis in private communication doesn't diminish their distinctiveness. They argued that
their sign deviated significantly from similar representations on various platforms and
highlighted that the EU audience might not be familiar with US sign language.5

Decision

The EUIPO Second Board of Appeal ultimately dismissed the appeal and held that the sign
applied for was devoid of distinctive character. In deciding that the public “can certainly
perceive the sign that is the subject of these proceedings as the ‘I Love You’ emoji” the Board
commented that there are various variations of the „I Love You‟ emoji. By way of example, the
Board noted that the emoji is represented in the depiction below by the left-hand hand:

Comment

Given the ongoing inconsistency between trademark offices and Courts about 3D trademarks and
shape marks, this may not be the end of the case and Käselow may yet decide to pursue matters
further by appealing the Board of Appeal‟s decision to the General Court of the EU.
Interestingly, the Board of Appeal commented that pictograms are often devoid of distinctive
character because 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

This is arguably at odds with the McCain decision, where the General Court held that the smiley
face shape was inherently distinctive and continues to be perceived as an indication of origin
when used on potato chip products. In the present case, the Board also noted that emojis function
as a parallel language, which convey a nuanced meaning and make it easier to express feelings.
For that reason, they are often connected with positive communication and the Board decided
5
Gerard Kelly, No Love for Emojis to Act as Trade Marks, Lexology (July 21, 2023),
https://www.lexology.com/library/detail.aspx?g=5927ee8a-809c-42b1-ac75-442bf8962a9d.
that they are not therefore perceived as an indication of origin. This begs the question that if the
sign is deemed to relate to negative communication as opposed to a positive communication, if
the opposite decision would therefore be reached by the EUIPO. Despite the difficulties
illustrated by the decision with registering an emoji as a trademark, brand owners should be
aware that, as an alternative strategy, it may be possible to obtain a registration if it can be shown
that the emoji has acquired distinctiveness because of the use made of it. 6

Conclusion
The convergence of emoji popularity and trademark law presents a multifaceted issue with
distinct implications for India and Europe. While preliminary legal research suggests the
potential for certain emojis to acquire trademark protection under specific conditions, navigating
this space requires careful consideration of various factors.

Balancing Protection and Expression:

Both India and Europe acknowledge the importance of trademarks in protecting brand identity.
The Indian Trademarks Act of 1999 and the European Union Trade Mark Regulation (EUTMR)
provide frameworks for trademark registration. However, both regions must find a balance
between protecting brands and safeguarding the role of emojis as a form of free expression and a
universal communication tool. Overly broad trademark claims on emojis could stifle creativity
and hinder the organic evolution of this unique language.

Navigating Legal Nuances:

The legal landscapes in India and Europe regarding emoji trademarks present distinct nuances. In
India, the concept of acquired distinctiveness, as highlighted in relevant case law (e.g., [Cite
relevant Indian case]), plays a crucial role in determining trademark eligibility. This differs from
the stricter focus on inherent distinctiveness emphasized in Europe, as evidenced by recent cases
like Käselow Holding GmbH. Understanding these variations is crucial for navigating trademark
protection across these regions.

Global Consistency and the Need for Dialogue:

6
https://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=3370&context=historical.
The current situation presents challenges in terms of global consistency. Disparities in legal
frameworks across different jurisdictions can lead to confusion and inconsistency in emoji
protection. This underscores the need for further research and open dialogue among legal
professionals, tech companies, and the public. Discussions on harmonizing standards or
developing dedicated guidelines for emoji trademarks, taking into account the specific contexts
of India and Europe, could promote clarity and predictability within these jurisdictions, as
outlined by organizations like the World Intellectual Property Organization (WIPO).

Additional Considerations:

Economic Implications: Widespread emoji trademarking could have potential economic

ramifications in both India and Europe, particularly impacting smaller businesses and
individuals. Analyzing the potential impact on different stakeholders is crucial for understanding
the broader implications of this trend.

Ethical Considerations: Ethical concerns arise regarding the potential for large corporations to
monopolize certain forms of expression through extensive emoji trademark claims. This
necessitates careful consideration of the ethical implications of granting trademark protection to
emojis.

By acknowledging these complexities and tailoring your conclusion to your specific research
findings, you can craft a well-rounded and thought-provoking analysis that sheds light on the
evolving legal landscape of emoji trademarks within the unique contexts of India and Europe.