Father Christmas: The start up and the fashion icon

18th Dec 2022

Father Christmas is a fashion icon, but what design and trade mark rights, whether registered or unregistered, could Father Christmas have obtained if he had thought about IP protection before starting out on giving joy to children across the world?

Santa’s outfit is now ingrained in the popular imagination of red and white fashion. This ‘look’ of Father Christmas’s outfit is arguably the result of the 1931 advertising campaign of Coca-Cola.

To be clear, Coca Cola did not invent Father Christmas. But, to quote from Coca-Cola’s website, before 1931, there were many different depictions of Father Christmas around the world, including a tall gaunt man,  an elf and there was even a scary Claus.

In 1931, Coca-Cola commissioned illustrator Haddon Sundblom to paint Father Christmas for their Christmas advertisements.

Those paintings, based on the poem ‘T’was The Night Before Christmas’, established Santa as a warm, happy character with human features, including rosy cheeks, a white beard, twinkling eyes, and laughter lines.

Also, we would add his new outfit was in the colours of Coca-Cola, red and white. Historically, Father Christmas had often been shown in a green outfit.

So, if Father Christmas had been setting up his toy and joy distribution business and had not disclosed any of his designs to the world, what sort of unregistered design rights could he have achieved in his outfit in the UK and EU?

Disclosure and unregistered design right protection

Well, presuming that he had not disclosed his designs to the world, then on disclosure in the EU, Lapland being in northern Finland and a part of the EU, his outfit would have benefited from EU Unregistered Design Right on being made available/disclosed to the public. 

This would protect the shape and configuration of the outfit and its colours, lines, texture, ornamentation, and contours amongst other design aspects.

The outfit would have to be novel, so not identical to what has gone before, and have individual character to give a unique impression.

Whether that criteria could be established in Santa’s outfit is open to question, but it should be remembered that in the Karen Millen case before the Irish courts on EU Unregistered Design Rights established that the combination of a series of relatively non-distinctive elements can lead to a protectable combination under EU Unregistered Design Right.

So yes, the protection of Father Christmas’s outfit might be narrow under EU Unregistered Design Right but it could well subsist.  

EU Unregistered Design Right lasts three years from first disclosure, so is a relatively short design right, and was designed for fast fashion or one-season fashion ranges which possibly doesn’t suit the longevity of Father Christmas and his outfit, but can be a very powerful fashion design right.

We should make clear that EU Unregistered Design Right is not a monopoly right, as you have to prove copying to show infringement.

Also, there is a question about where the design has to be disclosed for the first time to obtain EU Unregistered Design Right.

Although at present there have been no cases decided on the issue before the Court of Justice of the European Union (‘CJEU’), one was progressing Beverly Hills Teddy Bear Company and PMS International Group Plc.

That case was ultimately settled, and the general consensus seems to be that to obtain EU Unregistered Design Right protection that one has to disclose the design for the first time in the EU to obtain EU Unregistered Design Right protection.

Now that shouldn’t be a problem for Santa as it is likely that he would have disclosed his design on a catwalk in Lapland Finland.

However, it does impact whether he could obtain Unregistered Design Right protection elsewhere.

Now assuming Father Christmas has disclosed his outfit designs now, in a post Brexit world, he potentially could benefit from UK Unregistered Design Right which extends to the shape and configuration of the outfit, and UK Supplementary Unregistered Design Right which applies to aspects of colour, texture, ornamentation and the like.

UK Unregistered Design Right lasts 15 years from the first creation or 10 years from the first sale and UK Supplementary Unregistered Design Rights lasts 3 years.

However, to obtain such rights, disclosure must be for the first time in the UK.

Now if such disclosure was for the first time in Lapland that means that Santa would not benefit from UK Unregistered Design Rights unless he broadcast his catwalk show simultaneously to viewers in the UK. 

Again there has been no case law on this issue, but Father Christmas would at least have an arguable case for first disclosure in the UK if he undertook such a live-streamed show to viewers in the UK.

However, there is another complication with at least UK Unregistered Design Right in that to benefit from that right which protects shape and configuration the designer must be a UK national or a national of a limited number of states such as New Zealand and Hong Kong.

This requirement does not apply to UK Supplementary Unregistered Design Right.

Nationality issues?

Now it is clear that Father Christmas was not British.  

It is understood that Saint Nicholas was from the port city of Myra in Asia Minor, which is now the modern-day city of Demre in Turkey, but it is reported that he is Greek.

That would suggest if he designed his outfit he would not at least benefit from UK Unregistered Design Right protection in the shape and configuration.

Although he might benefit from UK Supplementary Unregistered Design Right protection if there was simultaneous disclosure into the UK.

Also, to benefit from UK Unregistered Design Right, the design must be original. There is no specific definition of original, but it cannot be commonplace.

Unregistered Design Right protection in the UK and EU is highly complex.

Although Father Christmas may be able to instantaneously deliver presents to the whole world on Christmas Eve, it doesn’t seem he has the power to get around issues associated with first disclosure and Brexit when one comes to Unregistered Design Right in the UK and EU.

There is also the drawback that he would have to show copying to prove infringement.

Registered Design Protection

Well, Father Christmas could look to register the design of his outfit via UK and EU Design Applications. There are no nationality issues to contend with here and the advantage is he does not have to prove copying to show infringement.

He would also have a one-year grace period from first disclosure by himself to consider whether to file a UK and/or EU Design Application. 

He could check out whether his new venture and outfit would be a success in that one year. However, we would generally have advised Father Christmas to file any UK and EU Design Applications before disclosure and maybe to have considered deferred publication if he was concerned about competitors seeing his new outfit. 

He could defer publication for up to 12 months from the filing date in the UK and 30 months from the filing date of the EU Design Application. Also, there are complications with the fact that many countries do not have any grace periods for design disclosure, so, unless Father Christmas utilised the six month priority period, he could be barred from obtaining registered design protection in other states such as China.

Now UKIPO and EUIPO only perform a formalities examination for UK and EU Design Applications, they do not undergo novelty examination.

So it would be almost guaranteed that Father Christmas would obtain a design registration.

EU Design Registrations can be granted in a few weeks, often much sooner, and a UK Design Registration in a month or so.

The cost of registered design protection is relatively low.  Validity is not tested until a UK or EU Design Registration is challenged by a third party and generally that would be based on an allegation that the design was not new or had individual character.

UK and EU Design Registrations can last up to 25 years renewable every five years. They protect the overall look of a design such as colour, lines, contours and shape, and configuration.

However, if we were advising Santa on his design filing strategy we would advise utilising multiple design filings under single applications in the UK and EU.

Also, we would suggest that multiple designs cover the whole design and then individual aspects of the design of the outfit utilising disclaimers, registering in both colour and black & white.

This would enable Father Christmas to maximise his range of registered design protection.

Now both Unregistered and Registered Design Protection has limited duration could Father Christmas benefit from any other forms of IP protection in his outfit?

Trade Mark Protection

Well in the UK and other common law countries of the EU such as Ireland, Malta, and Cyprus, it is possible with time that his outfit might potentially be protectable under the common law tort of passing off.  Father Christmas’s outfit is iconic and he could now argue with us that he had used his outfit for a sufficient period of time to have established goodwill in the ‘business’ of distributing presents across the globe.

However, it is notoriously hard to protect elements of fashion design under common law.

Also, there is a question of whether he is selling an outfit or using that outfit to market an undertaking. Also registered trade mark protection should not be overlooked.

Although undoubtedly trying to register the design of the outfit as a trade mark would probably encounter an objection to its inherent distinctiveness, it is possible that Father Christmas could obtain registered trade mark protection based on acquired distinctiveness through use.

However, again, that would be hard to achieve and the question would remain over what Father Christmas is selling in his outfit: the outfit itself or a delivery service?

Elves, Presents and IP

So when setting up his present delivery business, Father Christmas should not only think about the recruitment of elves and planning delivery routes for presents.

He should also consider how he will protect his IP in one of his most important branding and design aspects: his outfit and uniform.

Lee and Rebecca are authors of the HGF Fashionably IP podcast. The Christmas edition of the podcast forms the basis of the above article. Listen to the podcast here:

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