Russian mobile ad operator Superfon has registered a smiley as a trademark and now plans to demand compensation for its commercial use. The company says the license will cost several tens of thousands of dollars, but market players say they will not pay, and lawyers doubt the registration meets legal requirements. The case has already caused a stir. This is not the first attempt to secure rights to smileys, and the dispute may reach court.
Russian mobile advertising operator “Superfon” has registered a trademark in the form of the so-called smiley face. Now the company intends to demand compensation from those who use its mark. Market participants say they will not pay and note that this is not the first attempt to claim rights to “smileys.”Yesterday, Superfon president Oleg Teterin announced that Rospatent had issued a decision to register a trademark in the form of a smiley face for LLC “Superfon,” which specializes in placing advertisements on mobile phones. Rospatent’s decision was forwarded to “Kommersant” by assistant patent attorney and employee of LLC “Innotek” Galina Parfenchenkova.
Smileys are commonly used sets of symbols that depict emotions. The smiley registered by Superfon looks like ;-). According to Mr. Teterin, the symbols :-), ;), :) are considered similar to the registered one and are also not subject to commercial use. “Rospatent’s decision means that no commercial organization in Russia will be able to use this symbol for advertising purposes. This will not affect individuals who use smileys, for example, on the internet,” the businessman says.
Superfon appeared on the market in 2006, when the company launched a mobile advertising technology under the same brand. The essence of the technology is as follows: when an incoming call or sms is received on a smartphone (on the Symbian and Windows Mobile platforms), an advertising banner appears on its screen, for which the subscriber receives royalties from advertising companies. This year, Oleg Teterin spent three months in pretrial detention because a competing structure — GDM Group — tried to prove that Superfon’s technology had been stolen from them. Mr. Teterin was able to obtain the necessary patents, and he was released. In 2007, the company’s revenue, according to its own data, amounted to about $3 million.
The head of Superfon reminded that smileys are used on Korbina Telecom payment cards, as well as in Nestle and McDonald’s outdoor advertising. “Smiley faces are also used by services like odnoklassniki.ru and ICQ to facilitate communication between users,” he explained. Superfon will send warnings to violators for using smileys. “If there is no response, we will sue and demand compensation,— says Oleg Teterin.— Legal use will be possible after purchasing an annual license from us. It will cost a little — several tens of thousands of dollars.”
Partner at the law firm Salans Viktor Naumov acknowledges that Rospatent’s decision gives Superfon exclusive rights to the smiley. “In court, violators of the rights may be ordered to withdraw goods with this trademark from circulation, compensate damages, or pay compensation of up to 5 million rubles,” says Mr. Naumov. However, he believes that the registration of the smiley “does not fully comply with the requirements for trademark registration,” since “this set of symbols is commonly used, and its registration as a trademark may also conflict with public interests.”
The president of odnoklassniki.ru, Nikita Sherman, was blunt: “It’s unlikely that there will be an idiot in Russia who will pay Superfon for using smileys.” Alexander Malis, director for broadband internet development at VimpelCom (which owns Korbina Telecom), said that his company would not pay on principle. “Let’s patent parentheses too, and then count how many times they are used in Marinina’s books. And that’s it — she works for you,” Mr. Malis commented.
Mr. Sherman compared Oleg Teterin to Boris Moiseev, director of the financial company Era Vodoleya, who demanded $3 billion in compensation from the world’s largest search engine, Google. In November, the National Association for Innovation and Information Technology Development (NAIRIT) published a release stating that a Russian man had allegedly received a patent for contextual advertising technology in 1999, that is, two years before Google launched the service.
This is not the first attempt to obtain rights to smileys. In November 2005, the German company Siemens defended in the St. Petersburg City Court its right to use smileys in its mobile phones. The court overturned an earlier ruling by the Oktyabrsky District Court, which had upheld the claim of the “inventor of smileys,” military pensioner Viktor Petrov.