Is it possible to register an emoji as a trademark?

In December 2021, the German company Käselow Holding GmbH submitted an application for the registration of the following figurative trademark:

EU Trademark Application No. 18622650     for services in classes 36 and 37.

• 36. Advice on real estate investments; advice on the purchase of property; advice on real estate; real estate consultancy; real estate appraisal (...); intermediation in housing [real estate].
• 37. Exterior cleaning of buildings; construction and repair work for the modernization of buildings; building maintenance; cleaning work (hygiene services); proper restoration work on buildings; (...) of properties.

The EUIPO refused at first instance the application for this figurative trademark on the grounds that it lacked distinctive character concerning services in classes 36 and 37.

The decision emphasized that the "emoji" or emoticon    means "I love you" in American Sign Language, leading the applicant to argue that this sign is not part of European Sign Languages.

During the appeal phase initiated by the applicant, the Board of Appeal (BoA) affirmed that the requested trademark lacked the minimum distinctive character required by Article 7.1(b) of the EU Trademark Regulation (EUTMR). It was understood that the essential function of emoticons is to convey emotional sensations and that this particular emoticon did not serve to identify the business origin of the services in classes 36 and 37. Consequently, the appeal was dismissed.

The BoA's decision was primarily grounded in the following points:

• Article 7.1(b) EUTMR: For a sign to possess distinctive character, it must be capable of identifying products or services and attributing them to a specific business origin. In the case at hand, the referenced emoticon did not serve to attribute a business origin concerning the services requested in classes 36 and 37.
• The "relevant public”, which consists of potential customers of the requested services.
• Significance of the sign: the hand gesture emoticon holds meaning for the relevant public.

In addition to these legal considerations, it will be crucial to examine further EUIPO rulings related to the protection of emoticons to determine whether an emoticon can qualify as a trademark.