IP Information & News

Christmas trade mark troubles — how could Santa protect his image?

Annabel Hanratty

By Annabel Hanratty

Trade Mark Attorney

With Christmas just around the corner, the North Pole’s in overdrive. Understandably, after hundreds of years relentlessly producing goodies and delivering them around the world in just a few hours, Santa Claus is knackered. That is to say, right now he isn’t exactly the living embodiment of festive cheer that the telly makes him out to be.

In fact, Santa’s actually pretty sick of festivities — this year, the volume of knock-off goods bearing his name and image has gone through the roof (better than the chimney, I suppose) and Christmas seemed to start in September. He’s decided it’s time to put his foot down and wants to stop everyone exploiting his name and image for months on end in the UK — anything for a little extra peace and quiet before Christmas is really meant to start.

That’s why the big man himself dropped in to see us at UDL Towers. Here’s a short, jolly and rather round summary of the advice we gave him…

Relevant IP rights

Unfortunately for Santa, we don’t have a recognised form of image rights here in the UK. So, to try to protect someone’s ‘image’, it’s necessary to single out elements of that image such as name, appearance, catchphrases and the like, then try to match different types of IP rights to them, such as registered trade marks, registered designs, passing-off and copyright. It isn’t always a comfortable fit.

What options might Santa have?


Trade marks and registered designs

Santa’s out of luck here — he doesn’t own any trade mark or design registrations. Without having thought about IP and secured rights when he first started the whole Christmas thing, he’s now in a weak position to protect his image.


Passing-off

Undoubtedly, there’s significant customer goodwill attached to Santa’s name and image (that is, assuming his naughty list is short this year). However, Santa gives his goods away rather than sells them — which means his use isn’t technically ‘in trade’. Also, millions of businesses have been generating goodwill alongside Santa himself, so any claim of ownership couldn’t realistically fall to Santa alone.

As people are fully aware that many businesses use Santa’s name and image to promote products and services around Christmas, proving a misrepresentation could be very difficult.

Ultimately, without being able to prove goodwill or misrepresentation, there can be no damage — so poor Santa wouldn’t have an arguable case for passing off.


Copyright

Looking for a silver lining, copyright could indeed apply to images of Santa. Santa would be the copyright owner if he drew the images himself, or took photos himself.

And, since we know Santa can be a little over reliant on his workforce while he munches mince pies, if his elves created drawings and took photos for him he may also own the copyright in those. The general rule is that, where an employee creates a copyright work in the course of employment, the employer is the copyright owner.

However, the sheer number of drawings and images of Santa made by others means that any arguable copyright owned by Santa in images created by him or his elves would be limited. They would have a low degree of originality, and would probably only be enforceable against exact copies of his work. It wouldn’t, for example, give Santa the right to stop any and all images of a fat, jolly, white haired and bearded man in a red suit from being used — especially when you consider how many poor imitations you find knocking about in shopping centres around Christmas…

Can Santa register trade marks and designs now to use in the future?

Let's be honest — it’s not looking great for Santa. But what if he looks to secure IP rights now, so that he’s protected for Christmases to come?


Trade marks

To be registrable, a trade mark must be:

  1. distinctive
  2. not descriptive
  3. not generic

There are lots of other requirements which must be met to be registrable, but we’re keeping it simple for Santa — he’s rather busy right now…

The UK Intellectual Property Office’s ‘Manual of trade marks practice’ states that applications for the name or image of fictional characters are acceptable “unless they are well known to the extent that they have passed into common language and culture.” Now before you get mad, we’re not saying that Santa is a fictional character (we’re believers, of course), but merely that an application for the mark SANTA covering toys and other goods which often bear his name or image, or are promoted under them, would not be registrable.

However, the manual does state that an application for a famous name covering goods which aren’t associated with the character may be registrable.


Registered designs

The novel and individual character requirements for a valid registered design could be problematic for Santa unless his images are very different from those that have gone before. Any rights that he could potentially get would be very limited, if valid at all.

Furthermore, the application for a registered design must be filed within 12 months after the design was first made available/marketed to the public. Santa would therefore need to create new images to register as designs.

On yer sleigh, Santa

Ultimately, there aren’t many IP options for Santa right now. His name and image have been so widely used by so many different entities and over such a long period of time that any possible rights have been whittled down.

If Santa is determined to try to ring-fence his name and image, it might be time for him to consider a new name and perhaps a drastic image overhaul (Gok Wan, RuPaul — standby). That way he might have options for trade mark and design registration, as well as copyright and passing off rights, in the future.

However, we’re pleased to say that despite the difficult IP position he finds himself in, talking it all out really did help Santa get over his grump. He was happy to spread the message about the importance of IP rights (anything for a short break from the day job) and he’s now ready to focus his attention on spreading Christmas cheer once more.

We’d like to join him in wishing a very happy Christmas and holiday season to all our clients, partners and friends!

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