Sunday Surprises

The University of Edinburgh is seeking to hire a Lecturer in Global Law and Digital Technology. Candidates with expertise in law and digital technologies are welcome to apply until May 29.

GikII, an annual conference on law, technology and pop culture, has launched the call for papers for its 2024 edition. This year, the conference will be held on 4 and 5 September 2024 at University College London. Interested participants are welcome to apply until June 28, with papers at the interface between law, (un)popular culture and technology.

The European Communities Trademark Association (ECTA) is hiring an accounting administrative assistant for a part-time engagement. The vacancy is open until June 20.

From May 30 to June 7, the University of Alicante is offering a 20-hours advanced course on creation and exploitation of intangibles in the digital society. The course is delivered both offline and online, and the registration is available here.

From June 3 to July 12, InterGI is organising an online course on geographical indications in Africa. Interested candidates are welcome to apply here.

By decision of 23 April 2024 the EUIPO refused to register a “smiley” to cover NFTs pursuant to Article 7(1)(b) EUTMR.

On 23 November 2023 The Smiley Company (the Applicant) filed the trade mark application no. 018953153 for a smiley face in classes 9 and 42 (NFT).

The EUIPO confirmed the following conclusions raised by the Office on 19 December 2023.

The relevant public would view the sign simply as a common smiley face, widely used as a graphic symbol and emoticon. This basic figurative symbol would not convey a memorable message to consumers and, therefore, would not be recognized as a commercial origin of the goods and services. On the contrary, the sign conveys purely positive information, suggesting that the goods and services are associated with feelings such as joy, agreement, enthusiasm, or happiness. It serves as a friendly assurance of customer satisfaction.

According to the EUIPO case-law (R-1489/2017, R-788/2013), smileys or emojis are typically used in both advertising and private communication to express positive emotions. Due to their versatile use for any positive message, consumers would perceive a smiley in combination with any category of goods or services as merely a laudatory and decorative element or a general advertising symbol.

The surge in the use of emoji and emoticons in online and digital communication prompts inquiries about their potential to serve as trade marks. Could a smiley face emoji be perceived as a badge of origin? Currently, emoji mainly serve as extensions of generic text, symbolizing common ideas and emotions. Individual emoji, such as faces, hand signs, hearts, flags, or images of everyday objects, remain generic symbols. A possible key solution would be unique stylizations, the creation of distinctive combinations of multiple emoji into a logo or design or a possible acquired distinctiveness.

The history of The Smiley is an example of the work by brand licensors to protect their heritage. In the recent years the case-law has clarified that emoticons and emojis cannot be registered as trade marks (see The IPKat here and here). This shows how the evolution of language and communication has influenced and continues to influence trade mark law.

It worth recalling the McCain case (T-553/21) where the General Court of the European Union determined that the smiley face shape was inherently distinctive and remained recognized a commercial indication of origin when used on potato chip products (see The IPKat here).