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 quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?