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Sharing the Christmas spirit

Sharing the Christmas spirit

Christmas is the time of the year when we celebrate appreciation and love we have for each other. It is the beautiful spirit of Christmas that makes the holidays so unique and therefore, this spirit should not be claimed by anyone. At the same time, Christmas is the time of year that companies monetize extensively. Associating themself with Christmas through marketing, launching new products in the holiday season, but also blocking and prohibiting each other from doing similar things. Legally this is not prohibited, but as a company you have to ask yourself, where do you draw the line?


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.

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IP Knowledge Quiz Designs

The plaintiff specializes in online sales of children's bicycles. In safeguarding its rights, the company has registered the design of these bicycles under Community Design. Through a multiple design registration, the company secures the rights for 10 new versions of its children's bicycles simultaneously under Community Design. Subsequently, when the defendant introduces a similar bicycle, legal proceedings ensue. Among the various claims, the plaintiff alleges infringement of its design rights, which in turn is contested by the defendant. A design must possess novelty and individual character. The defendant states that the design lacks novelty, as elements of this design are already present in various existing bicycles. Essentially, the defendant's bicycles reproduce these elements, resulting in a lack of individual character. According to the defendant, the community designs are thus invalid. Even If the plaintiff's designs should be valid, the defendant argues that its bicycle deviates sufficiently. The defendant argues that the plaintiff has sought protection for more or less similar designs in the multiple design registration. Apparently, the plaintiff believes that these designs differ enough to create a different overall impression. The defendant's bicycles deviate just as much, thus creating a different overall impression (the so-called doctrine of equivalents argument). The question arises: are the plaintiff's bicycles valid designs despite comprising known aspects from various bicycles, or does the defendant's design exhibit sufficient deviation, thereby enabling the invocation of the doctrine of equivalents concerning the multiple design registration? The court determines that designers of children's bicycles enjoy considerable freedom in their designs. Consequently, if another bicycle lacks significant distinctions, it will quickly evoke a similar overall impression for the informed user, thereby lacking individual character. The comparison is drawn between the new design (the AMIGO bicycles from T.O.M.) and an older existing design (bicycle). To prove that a design is not new, you cannot, as Prijskiller (the defendant) asserts, mosaic together various elements. Therefore, as a defendant, you cannot argue that a design is not new because its characteristics are present in various different products (see also the judgment Karen Millen). If, as a designer, you combine different aspects from multiple designs for the first time into a new product, then this is simply a new and valid design. This is the case with the AMIGO bicycle. The design is upheld as valid. The AMIGO Magic bicycle features a unique tubular frame, rendering it novel. The bicycle is further distinguished by the name MAGIC, the chain guard design, and accessories such as a basket, handlebar streamers, and doll seat. Prijskiller contends that its frame shape differs (being thicker) and that the drawings are positioned differently. Additionally, Prijskiller highlights the distinct color scheme; however, TOM has registered the designs in line drawings, thus disregarding this element in the evaluation. Nevertheless, several similarities are apparent. Both bicycles exhibit an almost identical pattern of butterflies and flowers, positioned nearly identically on the frame. Furthermore, the name MAGIC is depicted in the same font and placement on the chain guard. Consequently, this bicycle fails to evoke a different overall impression for the informed user. The designer's extensive creative freedom in designing children's bicycles means that the differences highlighted by Prijskiller are minor and inconspicuous. Prijskiller's invocation of the doctrine of equivalents is likewise dismissed. The court opines that this case pertains to models concurrently deposited by T.O.M. This circumstance precludes the invocation of the "doctrine of equivalents" because, in compliance with the regulations regarding novelty, individual character, and the grace period, the various models cannot diminish each other's novelty or individual character, nor their scope of protection. In essence, in simultaneous (multiple) deposits, the "doctrine of equivalents" holds little significance. Consequently, these 2Cycle Magic bicycles fail to impart a different overall impression for the informed user. The designer's extensive freedom in designing children's bicycles and the minor differences highlighted by Prijskiller render the infringement claim upheld.
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