“Merry Christmas”, “Christmas”: Is It Possible to Protect These Terms as Trademarks?

But is this actually possible?

Let us recall that, in order to be registrable, a trademark must not describe the products or services to which it is applied, nor any essential characteristic of those products, such as their type, quality, quantity, purpose, value, geographical origin, or the time when the goods or services are produced.

A review of how trademark authorities assess the validity of holiday names filed as trademarks leads to the clear conclusion that a monopoly cannot be granted over a name for products or services that consumers would directly associate with the holiday in question.

For example, the French trademark “HALLOWEEN” was refused for confectionery. Since the holiday has been associated with candy ever since it was introduced in France, granting a monopoly to a single person would have prevented other market players from freely using the term for those products.

Along the same lines, the mark “SAINT VALENTINE” was refused in 2020 by the EUIPO for clothing, footwear, and headgear. The Office considered that the verbal mark “Saint Valentine” would immediately inform consumers that the goods designated in the application were articles to be worn or gifted on Valentine’s Day.

By principle, the same reasoning should apply to the holiday of “NOËL” or the common expression “JOYEUX NOËL.”

Surprisingly, however, a search of French and European trademark registers reveals numerous French trademarks made up of these terms alone, or combined with logos or other words, covering a range of products or services, and a few European trademarks as well.

If we focus only on marks composed of these terms alone, we find, for example, the longstanding French mark “NOËL” for shoes, the European mark “JOYEUX NOËL” for perfumery goods, and the European mark “NOËL” for confectionery and cakes.

Looking more closely, there appears to be a difference in approach between the EUIPO and the French IP Office.

The EUIPO once seemed willing to accept marks consisting solely or partly of the word “Noël.” However, the vast majority of such registrations date back more than ten years, and that period now seems to have passed.

Indeed, in May 2023, the EUIPO refused applications filed by NOEL ALIMENTARIA for the term “NOËL” with a logo, covering food products. The Office considered that the sign “Noël,” presented in red and white, would be readily understood by consumers as referring to the Christian holiday of the same name. It held that the relevant public would perceive the sign as indicating that the products were offered at Christmas or related to Christmas. This reasoning is consistent with the earlier decisions concerning “Halloween” and “Saint Valentine.”

The French IP Office, by contrast, seems to take a more flexible approach to such filings. Indeed, a much larger number of marks containing the word “Noël” continue to be registered there today, often in combination with fanciful terms.

The validity of the term “NOËL” alone has not yet been challenged, even in opposition proceedings filed by NOEL France on the basis of its earlier trademark “NOËL,” registered in particular for shoes. It is possible, however, that this company may have acquired distinctiveness for its mark through long-standing, intensive, and consistent use.

That said, to our knowledge, no court decision has yet addressed the issue of appropriating these terms through trademark registration. Such cases would nevertheless likely align with the general approach reflected in the above-mentioned European decisions.

One thing is certain: we remain free to wish you all “A Merry Christmas” and a very happy holiday season, without fear of any challenge from the owners of the marks identified!