Publication / 12 01 2021

Ho-ho-ho! Trademark for Santa

Ho-ho-ho! Trademark for Santa

The breathtaking year 2020 has come to an end, but the time of festive mood and fun is in full swing. Of course, we have all already received gifts from St. Nicholas (or almost all), and some even from Santa Claus and Ded Moroz*. I wonder if these elders registered their names as ™ in Ukraine? In the gift market, the competition is quite hard, and we need to distinguish from whom we get sweets!

We at Mamunya IP decided to investigate this issue. As it turned out, none of the grandfathers understood the intricacies of intellectual property, since they did not even register their name as a trademark. But we found that other people have already managed to use their reputation and register identical or similar trademarks in Ukraine. We also believe there are high risks of misleading consumers regarding the person who produces goods or provides services under such trademarks.

Thus, back in 2008, legal protection was provided to TM “Santa Claus Agency” for toys and Christmas decorations (28th grade), and in 2019 — TM “SANTA CLAUS” for confectionery (30th grade).

St. Nicholas turned out to be more popular because his name is part of the TM “Main Residence of St. Nicholas” for advertising services (class 35), entertainment services (class 41), and hotel and restaurant services (class 43); TM “St. Nicholas Post” for stationery (16 class), as well as for advertising (35 class), postal and transport (39 class), entertainment (41 class) and hotel and restaurant (43 class) services; TM “Residence of St. Nicholas in the Carpathians” for hotel and catering services (43 class); TM “St. Nicholas Clinic” for medical and veterinary services (44 class). Moreover, the name of St. Nicholas is mentioned even in the names of several industrial designs.

As for Ded Moroz, his name in Ukraine is used, surprisingly, for watches and chronometric instruments (14th grade), and is quite often included in the signs covering confectionery (30th grade), entertainment and gaming services (41 class), as well as advertising services (class 35). As in the case of St. Nicholas, the image and name of Ded Moroz are also used in the registration of an industrial design.

In general, if you ever meet a real Saint Nicholas, Santa Claus, or Ded Moroz, please tell them that Mamunya IP lawyers are ready to provide comprehensive support for their intellectual property rights. At the very least, it is worth thinking about the registration of trademarks, and in some cases, it is even possible to apply to the judiciary and antitrust authorities.

*Ded Moroz (the literal translation is “Grandfather Frost”) is a fairy-tale figure similar to Saint Nicholas, and Santa Claus. Has his roots in Slavic mythology and became an obligatory character on the New Year holiday in the Soviet Union back in the late 1930s. He is traditionally depicted as an old man in a blue, red, or white fur coat, with a long white beard riding a trio of horses. Often comes in the company of granddaughter Snegurochka (the literal translation is “Snow Maiden”).

Specially for Yurydychna Praktyka, IP Reporter

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