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A Russian businessman says that he has trade marked the emoticon and that commercial uses of punctuation marks to convey a wink will require a licence costing over $10,000. But a trade mark attorney said that his demands will be irrelevant to uses in the EU.

The BBC reports that entrepreneur Oleg Teterin claims that his registration for a trade mark over the sequence of semi-colon, hyphen and closed-parenthesis – ;-) – has been granted by Russia's federal patent agency.

Teterin told Russian TV channel NTV that companies will be asked to pay an annual licence fee of "tens of thousands of dollars" to use the emoticon. He will not charge individuals who use punctuation marks to wink at each other in their electronic communications.

"He also said since other similar emoticons – :-) or ;) or :) – resemble the one he has trademarked, use of those symbols could also fall under his ownership," reports the BBC.

But a British trade mark specialist said today that the symbols would not be eligible for protection in the EU.

Such a registration could be objected to on two basic grounds, according to Lee Curtis, a trade mark attorney with Pinsent Masons, the law firm behind OUT-LAW.COM.

"Firstly, the emoticon is effectively not acting as a badge of trade origin. In the main, trade mark registrations protect terms which distinguish the goods and services of one trader from those of other traders. I doubt the public would ever view a ;-) emoticon as a trade mark," he said.

"The ;-) is descriptive of a feeling rather than the goods and services of any one trader. The emoticon simply does not act as a badge of trade origin," said Curtis.

"Secondly, emoticons are now so widely used that they have effectively become descriptive terms in common parlance. Thus, even if one could argue that when the emoticon was originally devised that it was capable of acting as a badge of origin, the term is now so widely used that it has effectively become a term of art. The use of emoticons has not been controlled by a single entity and effectively the public owns the term now."

Curtis said that trade mark registrations are territorial, so even if Teterin only has a registration in Russia, it cannot be enforced in any other country.

According to Wikipedia, emoticons can be traced back to the 19th century. The first documented use of a colon, hyphen and closed-parenthesis to convey happiness dates from 1982. Several people have laid claim to the 'smiley face' graphical variant – the iconic yellow circle with two dots and a curve. The smiley is the subject of numerous UK trade mark registrations.

Copyright © 2008, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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