Can you trade mark Christmas? The festive fight for distinctiveness

For many people, Christmas is the largest cultural celebration of the year, filled with traditions and customs to brighten the darker days of winter. It has also become a commercial phenomenon, unlike any other time of the year, with businesses keen to secure protection for their festive trade marks.  

The function of a trade mark is to distinguish the goods and services of the proprietor from other traders within a particular market. Marks that are devoid of distinctive character, where consumers would not see the sign as designating origin, cannot be registered.

The familiar Christmas phrases and characters are unlikely to function as trade marks, designating commercial origin. There have been many attempts to register Christmas trade marks with the UKIPO, and the registrability of such marks is considered further in the following cases.

In 2018, an invalidity action against a registration for the word mark MAGICAL SANTA succeeded on the grounds that the mark was descriptive and devoid of distinctive character. The evidence showed that the proprietor provided Christmas personalised letters from Santa. Consumers would either see the word ‘magical’ as a characteristic of Santa himself, and therefore indirectly describing the Santa-themed product, or as a characteristic of the goods. The mark, as registered, was considered origin-neutral in relation to letters from Santa. The hearing officer commented on the registration, as a word mark, including no distinctive embellishments. The outcome of this case may have been different if the applicant had sought protection for the stylised version of the mark that it included in its evidence.

Unregistered trade mark rights in UK Christmas World were recognised in another invalidity case against a registration for the mark Christmas World. Direct Global Trading had built up a business selling Christmas lights and decorations from its website. Evidence and materials filed in support of the invalidity action demonstrated that goodwill had been built up in the UK Christmas World mark before the application date. The hearing officer concluded that customers would be confused by the later registration, believing that goods offered for sale under the registered mark emanate from, or are approved by, Direct Global Trading. The similarity of the marks and the identity of the goods would likely lead to a diversion of trade away from Direct Global Trading’s business.

A trade mark registration provides the owner with the exclusive right to prevent other traders from using the mark. Trade mark applications for the familiar Christmas phrases and characters are unlikely to be registrable, but it may be possible to register a distinctive variation, such as a stylised version of the mark with a distinctive device. Trade marks will also be refused registration if they describe the goods or services or have become customary in the trade.

It is sometimes possible to overcome objections raised against an application if the mark has acquired distinctive character through use, which would then allow it to function as a trade mark designating the origin of the goods and services. If you have been using a festive mark for some time, you may wish to consider seeking registration based on evidence of acquired distinctiveness.

If you would like to discuss any aspect of trade mark law or get advice on your own intellectual property, please email us at gje@gje.com.