21 December 2023

How best to mark Christmas!

While consumer spending habits continue to change, Christmas remains the peak season for many businesses in the western world. All do their best to encourage consumers to treat themselves, their partners/families/employees to meals, entertainment or travel to mark the December celebration in the most memorable way. All press the importance of showing love/appreciation at Christmas through desirable gifts.

It is not surprising that businesses try to capitalise on this lucrative market by devising brands around the word CHRISTMAS and that they try to protect these through trade mark registration. The tension lies with the reluctance of the trade mark registration authorities to grant a registration for any mark which they consider should be freely available for use by all. If the mark applied for does not, in addition to the word CHRISTMAS, contain elements which make it distinctive for the goods/services applied for, it is likely to be refused.

This was neatly summarised in the Chilean Trade Mark Registry’s 2022 refusal of an application to register Feliz navidad y un prospero año (the Spanish language equivalent of Merry Christmas and Happy New Year) as a Chilean trade mark for
Organization of events for cultural purposes; Organization of cultural and artistic events. The Registry rejected the mark on the basis that it was a common term incapable of indicating the trade origin of such services.

The singer Mariah Carey filed an application (through her company) in 2021 to register QUEEN OF CHRISTMAS as a US trade mark for a range of goods including perfume, makeup, clothing, jewellery and sound recordings. The application was opposed by another singer who claimed to have used the same mark herself and who argued that it was a “ perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come”. The oppositions were not defended so the application was deemed abandoned.

In 2023 the Benelux Trade Marks Registry refused an application to register Symphonic Christmas for mp3 files and musical performances on the basis that the mark was descriptive and lacked distinctive character.

At the time of writing, the UK Trade Mark Registry had received 33 applications in 2023 to register trade marks containing the word CHRISTMAS. In general, the logic of the UK Registry’s refusals and acceptances of CHRISTMAS marks is clear – if any elements in the mark, over and above the word CHRISTMAS,  add the necessary distinctiveness to make the mark capable of indicating the origin of the goods/services it will be accepted; if not, it will be refused.

The UK Registry’s acceptance of a 2023 application to register CHRISTMAS JUMPER at first sight seems surprising but, since the application did not cover knitwear or clothing, is logical. This mark calls to mind the EU Trade Mark Registry’s acceptance in the past of FLEECE NAVIDAD for, amongst other goods and services, fleece tops. The play on the word Feliz (see above) and the combination of Spanish and English appear to have been considered to make that mark distinctive.

The reasoning behind the refusal of a 2023 application to register Christmas By The Sea as a UK trade mark for event marketing; promotion of special events was presumably that all should be free to use that mark to promote Christmas-season or Christmas-themed events at coastal locations.

A 2023 application to register as a UK trade mark for, amongst other goods, Christmas lights and Christmas tree decorations was refused. We can only guess that the UK Registry found that the red stylised font didn’t add the necessary distinctiveness to the words to make that mark capable of indicating origin from a specific source. A UK trade mark application filed in September 2023 to register The Christmas Party Band for e.g. Musical entertainment remains (at the time of writing) under examination. This suggests that the mark was objected to on the basis that it is not capable of indicating that the musical entertainment comes from a specific source. Likewise, the fact that a UK trade mark application filed in October 2023 for CHRISTMAS MUSIC EXPERIENCE for services such as Provision of non-downloadable audio and video entertainment via streaming services; Provision of non-downloadable audio and video entertainment via electronic or digital transmission has (at the time of writing) not been published suggests that the mark was objected to for not being capable of indicating origin.

Perhaps the most memorable Christmas-related decision of 2023 was the Swiss Trade Mark Registry’s refusal of an application to register CHRISTMAS PIG as a Swiss Trade mark in respect of mineral waters. The basis of the refusal was that the mark applied for would lead consumers to believe that the mineral waters would contain Christmas pig and would thus be deceptive. The applicant managed to persuade the Swiss Registry otherwise and the mark eventually proceed to registration for mineral waters and other goods.

In June 2023 the Chinese trade mark registration authorities refused separate applications by the same party to register CHRISTMAS IN A CAN and CHRISTMAS IN A CUP for various alcoholic products in Class 33 on the basis that the marks were devoid of distinctive character. The fact that neither the UK nor the EU trade mark registration authorities raised objections to these marks illustrates how differently the different trade mark registries can view the same mark. Thus, knowledge of the registries’ differing practices is invaluable when planning a brand protection strategy.

For any Scrooges tempted to promote their products with an anti-Christmas message, note that BAH HUMBUG is registered as a UK trade mark for Beer and other Class 32 goods. On a related Charles Dickens theme, an application to register A CHRISTMAS CAROL as a UK trade mark for Alcoholic beverages except beers proceeded to publication for opposition purposes in November 2023.

Merry Christmas!