Santa Claus’ suit is protected as a registered community design. This may be a serious problem for business
Why will this year’s Christmas be unexpectedly difficult for everybody profiting from Santa’s outfit? As it turns out, a Polish entrepreneur successfully registered Santa’s suit as a community design. In theory it means that at this moment no one else can trade this product in the European Union.
Bartosz Fert from Fert Jakubiak Wróblewski patent & trademark attorneys explains – From the viewpoint of the law, the situation is clear. The owner of an industrial design has sole rights to use it. As a result, a sale ban will affect the entire retail branch: physical shops, online stores, malls, and online marketplaces. This applies to every EU country.
Fert adds, EUIPO does not analyze the submitted requests in terms of their merits. It only carries out a formal analysis and on its basis grants exclusivity for an industrial design. Some people abuse this system.
Santa’s outfit has just undergone such a procedure mentioned above and obtained the valid registration number: 009067234-0002. As a result, any company that wants to make money on an outfit similar or identical to the pattern, exposes itself to a dispute with an entrepreneur from Poland. It was reported that the owner of this design uses it to block competitors on e-commerce platforms, using the “notice and takedown” procedure. Until recently, he was successful in clearing the Polish market from allegedly infringing products.
Revocation of the request as a rescue. Behind the scenes of the action #spórostrój
This situation can only be resolved in one way – by invalidating the design. On November 18, 2022, on behalf of Bartosz Fert, a request was submitted to the European Union Intellectual Property Office. You can read it in full here.
At the same time as submitting a request we have also launched an educational campaign #spórostrój (meaning in Polish: dispute over the costume) which helps the retail industry to understand the consequences of design registration. Until Christmas, more materials will appear on my LinkedIn profile regarding the protection of products designs in the context of the reserved Santa’s costume. I invite all those who are interested to follow this content and discussion under the hashtag #spórostrój – encourages Fert.
We want not only to warn businesses, but also to build greater awareness in the field of intellectual property protection. This registration explicitly showed how the movement of one, even a small company, can cascade into trade throughout the whole European Union. Especially on e-commerce platforms – adds legal counsel Magdalena Podbielska, representative in the case.
Trainee patent attorneys Stanisław Gibalski and Anna Bień as well as legal assistant Jan Kulpiński are also involved in the project on the side of the law firm Fert Jakubiak Wróblewski patent & trademark attorneys.
#spórostrój will be continued
However, the request of Fert Jakubiak Wróblewski, will not put the clock back. Even assuming a positive scenario, such as the cancellation of the registration by the office in Alicante, this case will certainly not end this year’s holiday season. Businesses must therefore evaluate the risk to freely trade Santa Claus jacket.
It can take up to two years for an industrial design to be declared invalid in the European Union. Our team have strong legal arguments, but we cannot promise that the office will decide to approve our request. Hopefully, we will make the owner to voluntarily abandon his registration before Christmas – declares Fert.
Written by Bartosz Fert, Partner, Fert Jakubiak Wróblewski patent & trademark attorneys