In an interesting case, a “heart” is quite literally at the “heart” of a trademark dispute. Most recently, fashion house, Gap Inc. and fashion design company, Diane von Furstenberg (DVF) Studio, have approached a federal court in the Southern District of New York to decide whether the “heart emoticon” (<3) can be protected as a trademark [declaratory judgment complaint 13 civ 8943 (December 17, 2013)]. In the light of this development, it is worth exploring the trademark worthiness of emoticons and whether The Trade Marks Act, 1999 would support registration of the same.
It all began when VeryMeri Creative Media Inc., a kids’ t-shirt company, sent a cease and desist notice to the plaintiffs who were using the emoticon on their products; VeryMeri alleged infringement and dilution of its trademark which closely resembles the heart-shaped emoticon. One would expect that such a trademark claim will not survive in the first place, given the widespread usage of the mark on social networking sites- this forms the main argument of the plaintiff.
The history of trademarking emoticons may be traced to Despair Inc., a company concerned with “demotivation” posters and souvenirs, which trademarked the frown emoticon‘:-( ‘ in USA. Taking cue from this, a Oleg Teterin (owner of a mobile advertising firm) trademarked the wink smiley ‘ 😉 ‘ in Russia.
Emoticons do not fall in the category of descriptive or generic marks; this is because emoticons are expressive of a mood and do not describe any product/service with which they are used. Therefore, it becomes hard to oppose the trademark registration of emoticons on the absolute grounds for refusal of registration as given under section 9 of The Trademarks Act, 1999; further, the applicant may make his case for registration stronger by showing that the use of an emoticon as a trademark is arbitrary or suggestive (arbitrary and suggestive marks are considered fit cases for trademark registration unlike the generic and descriptive marks).
While the popular opinion is that there is nothing in the statute which prevents registration of a well-known phrase/symbol as a trademark, the registration of the same will have significant ramifications for the people who want to use it subsequently for commercial purpose; something that was there in the public domain and was being freely used by one and all, should not become the monopoly of a single entity overnight due to trademark registration.
The mark must be used “in the course of trade”
The counter argument to this is that trademark registration of the emoticon and more specifically, the heart emoticon, will not change anything for IM users since the use of the mark to be considered trademark infringement must be “in the course of trade” (See section 29 of The 1999 Act). However, the mark will no longer be available for use by other business enterprises. For example, if tomorrow someone were to design a t-shirt/apparel featuring a heart emoticon, he will be slapped with a notice of trademark infringement (which is precisely what happened to GAP and DVF).
The Smiley Co. owns the trademark and copyright over the classic smiley 🙂 in over 100 countries. Interestingly, however, a US Court had refused to entertain a claim of trademark infringement by Walmart (which had also started using the emoticon) stating that the mark itself was not distinctive and hence not a trademark at all (Smith v. Wal-mart Stores, Inc.).
Lack of distinctive character
The same line of argument may in fact be employed to oppose trademark registration of emoticons in India; section 9 (1) (a) of The Act allows for refusal of registration of a mark if it is “devoid of any distinctive character”. One might argue that the ‘heart’ symbol is actually a commonplace symbol; indeed, the heart has, since times immemorial, been represented as <3.
In fact, there is evidence that the heart symbol has been used in logos of companies in the past. A popular usage of the heart symbol is in the logo ‘I Love New York’:
Another notable trademark registration bearing the heart is that of the Gareth Bale heart celebration (the footballer is known for his characteristic reaction of “making a heart” each time he scores a goal). His registered trademark includes a heart with the number 11 inside it. Apparently, there are other footballers who did the heart-celebration before him and therefore, one might argue that Bale’s heart-celebration is not distinctive. Moreover, restraining others from doing the heart celebration will indeed be an unfair exploitation of his image rights.
If heart trademarks are allowed (in particular trademark registration of the heart emoticon) it might open floodgates of litigation for companies whose logos have undergone a “slight change of heart”, i.e., variation in the representation of the heart or those which incorporate the heart as only part of their logo. In my opinion, no one should be allowed to restrict the use of one of the most recognizable symbols in the world and therefore, the heart symbol should not be granted trademark protection.
To analogize, I recall a famous curse emoticon on Yahoo which was in vogue a few years ago and phonetically sounded as ‘Kutte Kaminey Main Tera Khoon Pee Jaoonga’. This was a famous dialogue rendered by ‘Veeru’ in ‘Sholay’. It will be interesting to see how things play out if this emoticon is trademarked and subsequently used by another in a film; will the trademark registration be ground enough for bringing to an end one of the most iconic dialogues of the Indian cinema?