1. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
TRADEMARKING
EMOTIONS
KRISHNAVENI.S
HEAD
-RESEARCH

2. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
INTRODUCTION
Trademarks serve as source identifiers by
distinguishing the goods and services of one
person or company from those of another.
However, what is considered to constitute a
trademark is defined differently
in trademark laws throughout the world.
Traditionally, a mark will consist of a word,
logo, or a combination of both. The word or
words may be invented or may appear in
dictionaries. A mark may also include letters,
numerals, or combinations of both. A logo
may be an abstract design, stylization or
simple reproduction of everyday objects or
images.

3. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
Evolution
However, over time other
elements besides words, logos or
graphic designs have served to
identify the source of goods or
services, thus serving the
function of marks. These are
called nontraditional marks.
Different countries grant them
varying levels of
protection. What is considered a
protectable “nontraditional"
mark in a country may not be
granted any level of protection
in another country.

4. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
FEW EXAMPlES oF non
tRADitionAl MARKS
• COLOUR
• SOUND
• TASTE
• SMELL
• SHAPE
• SLOGAN
• TRADE DRESS

5. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
lAtESt in tHE liSt…
The word emoticon is a combination of the
words emotion and icon. Emoticon is a
representation of a facial expression such as a
smile or frown, formed by various combinations
of keyboard characters and used in electronic
communications to convey the writer's feelings
or intended tone. . Emoticons are often used to
alert a responder to the tenor or temper of a
statement, and can change and improve
interpretation of plain text

6. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
HISTORY
• In the year 1982, Scott Fahlman who had grown tired of geeky
scientists who never got the joke. A member of a vanguard group of
computer experts involved in the earliest online newsgroups, the
Carnegie Mellon University researcher participated in e-discussions
on topics as diverse as abortion and campus parking. Many in the
newsgroup, he found, had caustic senses of humor, but without the
benefit of facial expressions or vocal cues to indicate irony, their
sarcasm was sometimes mistaken for spite.
• So he proposed in a newsgroup that posters use a digital smiley
face, :-), and a virtual frown, :-(, to clarify the tone of their
messages. Fahlman was pleasantly surprised when participants
began to use his "smiley" icons to denote emotive tenor.

7. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
HISTORY….
• . In the two decades since, the smiling and frowing icons have
taken the e-world by storm. Now called emoticons, short for
emotive icons, Fahlman's original sideways smiley face
sparked the creation of thousands of variations. There are
several emoticon dictionaries and a handful of academics
who earn their keep studying the trend.

8. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

9. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• Despite the long history of smileys, however, in the last decade
people succeeded in claiming ownership of emoticons.
• In 2006, Finnish law student Tuomas Mattila was granted a
trademark on a number of symbols by the authorities in Helsinki.
• At the height of the dotcom boom, meanwhile, Texan
"demotivational" poster company Despair Inc was granted a
trademark on the sad-faced - or "frowny" - emoticon: :-(.

10. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
THE RUSSIAN SMILEY
Taking cue from this, a
Oleg Teterin (owner of a mobile advertising firm) trademarked the wink smile
ay ‘ in Russia
According to Russian media reports, however, telecoms entrepreneur
Oleg Teterin has been granted a trademark on one of the most
common icons in circulation — the combination used to denote a
winking face:
Teterin said he plans to charge companies that used a virtual wink in
the course of their business
"I want to highlight that this is only directed at corporations, companies
that are trying to make a profit without the permission of the
trademark holder," he said in comments to NTV.
‘ ;-)

11. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
Can EmotiCons bE
tradEmarkEd ?
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).

12. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
HEart EmotiCon
• 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, 2011
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.

13. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
inCoUrsE oF tradE
• 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
internet users since the use of the mark to be considered trademark
infringement must be “in the course of trade”. 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). 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.).

14. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
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”.
• Similarly, in Finland, the emoticons :-), :), =), =(, and :( were
trademarked in 2006 for different products and services. Although
previously the Finnish National Board of Patents and
Registration (last visited Aug. 13, 2012) permitted a Finnish man to
trademark the "smiley" emoticon, consisting of a colon and
parenthesis :), the Supreme Administrative Court of that country
has now ruled that emoticons, i.e., pictorial representations of
emotions, are not eligible for trademarking. In a decision dated
August 13, 2012, the Court held that the symbols do not meet
trademark requirements and also said that because the smiley has
wide recognition, its use cannot be restricted through trademark
procedures.
• (Smiley Does Not Constitute a Trademark, the Supreme
Administrative Court Rules

15. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
UsPto …
• In the past five years, the U.S. Patent & Trademark Office has
received 24 emoticon-related applications, many of which are
still pending.
• Claire's Boutiques Inc., based in Hoffman Estates, Ill.,
trademarked the original smiley-face emoticon for use in
jewelry.
• Instructions.com, based in Ambler, Pa., hopes to trademark the
expression "service with a :-)" for the use in online retail.
• Deerfield Communications Inc., from Gaylor Mich., wants to
trademark "personal service with a :-)" for online customer-
service programs relating to software.
• And MCI Communications has registered to trademark "Is this a
great time, or what? :-)" for telecom services.

16. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• In Thailand, there has been a continual increase among
businesses in the use of emoticons as part of their customer
base expansion strategy For instance, a fast food business
well known for its chicken has been using various
emoticons collectively with its logo and individually on its
menus and products
• In Thailand, there has been a continual increase among
businesses in the use of emoticons as part of their customer
base expansion strategy For instance, a fast food business
well known for its chicken has been using various
emoticons collectively with its logo and individually on its
menus and products

17. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
Next iN the liNe…..
Gareth Bale ‘owns
trademark’ to his goal
celebration
Bale would be using the
celebration as a way of exploring
further merchandising
opportunities, including
jewellery, leather goods and
clothing

18. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CONClUSiON
Thus, there seems to be no doubt that
an emoticon per se is capable of
functioning as a trademark. Of
course, every case is decided based
upon its own particular set of facts,
and how this will play out in the
years to come will be interesting to
see.