A Willingham, Cambridgeshire resident has registered FATHER CHRISTMAS as a EU Community Trade Mark in no less than 3 classes of goods and services. “It’s a gimmick” say the UK patent office.
Topic: Brands
Who: Stephen Bottomley, Father Christmas Ltd and the Community Trademark Registry, Alicante
When: December 2002
Where: Willingham, Cambridge
What happened:
To a stunned British public, it was announced that Stephen Peter Bottomley of Willingham, Cambridge, had successfully filed an application with the Community Trademark Registry in Alicante, Spain to register the trademark FATHER CHRISTMAS. Not discouraged by the withdrawal back in October 2001 of a previous application to register the same mark in the UK for "advertising services" by "Click and Tell Media" of Newmarket (not a million miles from Cambridge so perhaps there is some connection?) Mr Bottomley filed papers seeking monopoly rights throughout the European Union in the words FATHER CHRISTMAS in relation to the sale of three classes of goods or services. In class 9 Mr Bottomley wanted to register FATHER CHRISTMAS for online electronic publications, "none relating to Father Christmas". In class 35 he wanted to cover electronic commerce and advertising services on the internet including business consultancy and in class 41 the coverage sought was in respect of "providing online electronic publications from the internet, electronic games services provided by means of the internet, none of the aforesaid relating to Father Christmas".
The applications have by all accounts been granted, although the UK Patent Office has been quoted as saying "It's a gimmick, it wouldn't hold water". It is right that compared to applications for UK trade marks, CTM applications have to go through a far less rigorous official vetting process before being accepted for registration. However, unless and until successfully challenged these registrations give Mr Bottomley monopoly rights to use FATHER CHRISTMAS to sell the relevant products across all 15 EU member states.
Why this matters:
Certain words can never be registered as trademarks so far as UK and EU law is concerned. Essentially those that are "devoid of any distinctive character", those which "serve in trade to designate the kind, quality, intended purpose or other characteristics of the goods of services in question", those which exist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
Other grounds for refusal include marks which are "contrary to public policy or to accepted principles of morality", or marks which are "of such a nature as to deceive the public". Looking at these, provided Mr Bottomley is happy to stick with his restriction on the rights to goods and services which have no relevance to Father Christmas as such, is there really any fundamental problem with the application? Perhaps we should be told exactly what basis the Patent Office has for its trenchant view.
