A quick check in the EUIPO trademark register will show you that in just the European Union, 189 trademarks applications have been filed, containing the CHRISTMAS element. Many of them are for Christmas related products, but definitely not all of them. It regularly occurs that the authorities refuse such Christmas-applications. The following marks, for example, have been refused: SILENT NIGHT HOLY NIGHT – THE CHRISTMAS CONCERT, a logo of a merry Santa containing the wording HAPPY CHRISTMASS SANTA.
This is a rather good approach of EUIPO. If someone really wishes to claim a mark for Christmas goodies and the application is a general Christmas-term, it is deemed descriptive. When the mark is not distinctive because nobody can recognise a commercial origin in the application, the mark will be refused. However, If you combine a Christmas related word with your own mark or logo to indicate which Christmas products originate from your company, the mark will be accepted. If the mark is not applied for Christmas related goods (like flowers), they are often also quite easily accepted.
Nevertheless, there are companies that try to push the Christmas IP-boundaries a little farther every year, acting purely for own economical gain. For example, TM Reporter has recently reported a Polish company that applied for a Community Design for a Santa suit. The company is actively pressuring others in stopping online sales of similar Santa suits based on their design rights by filing notice and take down requests. But can this be done so easily?
A Community design has to meet two requirements. On the one hand, the design must be novel and on the other, it must have an individual character. The EUIPO does not, however, checks these requirements and accepts any application as long as it meets the formal requirements. As a result, designs that are neither new nor possess individual character, are simply registered. In this way, the Polish company now has obtained rights to the Santa suit, which they use to harass various companies online. I don’t consider this to be the right Christmas spirit.
As the validity of a community design is automatically assumed, third parties (e.g. companies from which listings has been removed after the Polish firm has submitted their request to the e-commerce platform via a notice and take down form) are forced to start procedures at the EUIPO. A request can then be made to have the design cancelled, hopefully ensuring that it will no longer be valid. The procedure has now been started against the Polish company and rightfully so. My expectation is that it will be undisputedly successful, given that the suit is nothing more than the usual Santa suit that we have all known and loved for years. The overall impression is the same.
As far as I am concerned, it is justified for companies to use the Christmas spirit to their advantage and add Christmas terms or images to make clear that certain products are part originate from their company. However, there is a limit to what we should find acceptable. Companies should stop abusing loopholes to block competitors especially as they know that using a non-legal design has been banned before by the court.
