Merchants are awash in February products, events and promos meant to lure consumers to celebrate Valentine’s Day with their special someone. With these commercial activities come new trademarks. Espie Angelica A. de Leon reports. 
 

The month of February ushers in Valentine’s Day. Some jurisdictions celebrate this holiday with more excitement and vigor than the rest.  

In these places, commercial establishments are awash with products, events and promos meant to lure consumers to celebrate February 14 with their special someone via their brand experience. Floral shops are abloom with beautifully arranged bouquets, chocolate manufacturers concoct special fudgy bars and candies, bakeshops create mouthwatering cakes and pastries, bars and restaurants announce special promos and activities – all to cash in on one of the most romantic celebrations of the year. This scenario repeats itself with every holiday and festival in the calendar.  

With these commercial activities come the new trademarks – names of products or product lines on offering during the festivities, taglines for the events or promos mounted. Some of these marks bear either the name of the holiday or festival or terms associated with the festivities such as “Cupid” for Valentine’s Day and “Christmas Tree” for Christmas. Certain marks contain both.  

They are called holiday formative marks. Can these be registered?  

Our interviewees say yes, holiday formative marks may be registered, provided these are used to identify the source of the goods and services and don’t contain elements pointing to immorality, deception or scandal. The marks must also be distinctive, rather than being merely descriptive, among other limitations. 

“Terms like Christmas, Santa Claus, Valentine’s Day, Cupid, etc. are generally regarded as descriptive or generic being customary terms and widely used as cultural expressions. Further, these terms are descriptive of the theme, purpose or season, especially during the holidays they are associated with. As such, these terms are not registrable unless combined with other distinctive elements,” said Narcisa Medina, partner at Platon Martinez Flores San Pedro Leano in Manila. 

According to Rebeccah Gan, principal at Muncy, Geissler, Olds & Lowe in Fairfax, Virginia, the requirement for distinctiveness actually depends on the nature of the goods. “For example, CUPID is registered for underwear and VALENTINE is registered for beer. These usages are not descriptive of the goods,” she explained. 

Holiday formative marks: How to make them distinctive 

How can a holiday formative or holiday-related mark be distinctive enough for registration and protection? 

“The strongest approach typically combines multiple strategies,” says Sher Hann Chua, TMT/IP counsel at Linklaters in Hong Kong. 

What are these strategies? 

First, distinctiveness can be based on two main elements. The first element pertains to the goods or services which the trademark represents. Hence, applicants are required to specify the goods or services covered by the mark in their applications.  

Samantha Wesley Rosales, partner at Bengzon & Untalan in Manila, cited the term “Christmas” as an example. “If you were to register the term ‘Christmas’ as a trademark for services such as bazaars and/or festivals, and cultural events, then the Philippine Bureau of Trademarks is likely to deny the registration because the term is descriptive for those services. The term Christmas when used for the aforementioned services is describing that service. It is a Christmas Bazaar or a Christmas festival. No one person can exclusively own the term Christmas for these services because everyone should be allowed to properly describe their bazaar or festival held in December as a Christmas Bazaar or a Christmas Festival,” Rosales said. 

“However, the term Christmas may be registered if it is not generic or descriptive for the goods or services on which it is used. As an example, it may be possible to register the term Christmas as a trademark for services like computer repair or goods like television or washing machines. The term Christmas is not generic or descriptive for these goods and services because there is no association between these goods and services and the term Christmas,” she explained. 

The second element on which distinctiveness is based is the totality of the mark being applied for registration. This is where adding distinctive elements to the holiday-related mark, as Medina mentioned, comes in. 

“This includes creating invented or fanciful words using a root word related to the holiday or festival, incorporating distinctive design elements such as unique logos or stylized typography, pairing holiday references with arbitrary words or its own brand name or house mark,” Chua said. 

As to the mark “Christmas” representing bazaars, festivals and other such events, trademark owners can add “XYZ” to make it distinctive. “XYZ Christmas” is certainly more registrable than simply “Christmas.”  

Another example is Red Ribbon Valentine Black Forest, a registered trademark in the Philippines. It is the name of a limited edition heart-shaped cake with chocolate shavings, cherries and rose-shaped icing on top. The cake is sold by Red Ribbon, a leading bakeshop chain in the Philippines. In this case, the descriptive words “Valentine” and “Black Forest” combined with “Red Ribbon” made the mark distinctive, and therefore registrable. 

“Also, combination of the holiday name with particular presentation or arrangement of geometrical shapes could, as a whole, be regarded as fanciful and sufficiently distinctive,” Medina added. One example is “Merry Christmas Tree & Tree Device,” a registered mark in the Philippines pertaining to an image of a Christmas Tree with the words “Merry Christmas Tree” written diagonally across it. 

“The assessment focuses on the overall impression of the trademark as a whole, rather than on the specific term alone,” Shabrina Januarissa, associate at K&K Advocates in Jakarta, stressed. 

Additionally, a holiday-formative or holiday-related mark can acquire distinctiveness via continuous use in relation to the products and services that it represents.  

“This may result from consistent advertising, promotion and awareness activity by the trademark owner aimed at educating the public and the consumers that such trademark is a badge of commercial origin of specific goods or services,” Medina said. 

“In theory, long use of a holiday mark could merit a claim of acquired distinctiveness,” Gan added. 

A disclaimer may also be required for the generic or descriptive terms included in a mark. A disclaimer is a statement by the applicant acknowledging that they do not possess exclusive rights over the disclaimed part of the holiday-formative mark.  

“As with the example of ‘XYZ Christmas,’ if the owner disclaims the term ‘Christmas,’ they cannot prevent other people from using that same term as part of their trademark because the owner has acknowledged that they do not own the term ‘Christmas.’ However, they can prevent other people from using or registering the mark ‘XYZ Christmas’ or ‘XYZ’ on the same or related goods and/or services,” Rosales explained. 

In the Philippines, “Christmas” is disclaimed in the following registered trademarks: “Simply Christmas,” “Operation Christmas Child” and “Merry Christmas Tree.” 

“Given the foregoing, while the subject names related to holidays are generally generic or descriptive, ‘Cupid’ by itself was allowed registration in the Philippines and without any accompanying distinctive element,” Medina revealed, in reference to certain registered marks.  

Meanwhile, “Cupid” in the registered marks “Cheery Cupid,” “Cupid’s Touch Fragrances by Excella Essentials,” among others, were not disclaimed.  

Valentine was likewise not disclaimed in the trademarks “Section Saint Valentine” and “Red Ribbon Valentine Black Forest.” 

Infringement and enforcement of holiday-formative trademarks 

Are such marks more prone to infringement especially during the time of the holiday or festival with which they are associated?  

“Trademarks that include holiday names or holiday-related terms tend to be more vulnerable to widespread third-party use, especially during the relevant holiday period,” said Risti Wulansari, partner at K&K Advocates in Jakarta. “This is because these terms are often seen as descriptive or generic and are commonly used in marketing and promotional materials. As a result, enforcement can be more challenging, particularly where competitors are using the terms in a purely promotional thing.” 

Januarissa added that while trademark owners who incorporate general or holiday-related terms may still enforce their rights, protection usually applies only to the trademark as a whole. “If a third party is only using a common holiday term that forms part of the trademark, without copying its distinctive elements and for different products, such use is typically difficult to challenge,” she explained. 

Therefore, aside from incorporating strong distinctive elements into holiday-related marks, trademark holders must focus their enforcement efforts on cases involving the use of the trademark as a whole instead of widely-used common terms. The former creates a likelihood of confusion more than the latter, thus requiring more attention and urgency in terms of enforcement. 

Wulansari shared that their firm has advised and assisted clients regarding the registration of trademarks that incorporate general or commonly used terms, although not always specifically holiday-formative marks. “In our experience, outcomes may vary depending on how the trademark is presented and assessed. In some cases, the examiner has accepted such applications where the examiner considers the trademark, when viewed as a whole, to possess sufficient distinctive character. In other instances, we have encountered provisional refusals, typically on the grounds that the trademark lacks distinctiveness,” she related. 

Some of the registered holiday-related trademarks in Indonesia are “Cupid Maid”, which shows a colourful background and a girl in the foreground holding a bow and arrow with a heart attached to the arrow, “Easter Kitchen” and “Halloween Horror Nights.” “These show that, with the right structure and presentation, holiday-related names can qualify for protection,” Wulansari emphasized. 

Medina agreed that cases of trademark infringement increase during the festivity itself because several business enterprises tend to use holiday terminology for their marketing activities even if these terms are registered as trademarks.  

“Accordingly, non-specialized use, such as holiday greeting on apparel, is widespread and often non-infringing, making enforcement tricky,” she said. “In such case, the trademark owner must be able to distinguish whether the holiday name is being used descriptively as a greeting or customary expression, which is allowed and non-infringing, in contrast with the use as a brand/source identifier, which could be considered as an infringing act. In the latter scenario, the trademark owner may be able to enforce his rights against the infringer by availing the legal remedies under the IP Code.” 

For Rosales, the onset of a holiday season is not likely to give rise to infringement of such marks. “As mentioned earlier, the holiday-related name or term is unlikely to be allowed registration for goods and/or services. If it is allowed registration, the holiday-related name or term is probably disclaimed so the trademark owner cannot allege infringement based on the use of the holiday-related name or term,” she explained. 

However, it is possible to have edge cases involving holidays that are unfamiliar to people in a particular jurisdiction. Hence, the trademark examiner is wont to allow the mark to be registered since he or she is not familiar with the holiday or festival denoted by the mark even if it is generic or descriptive. The trademark owner may then enforce his or her trademark rights in the same way as any other right holder. “There is, however, an attendant risk to enforcing such rights,” Rosales noted. “The person against whom the trademark rights are being enforced may challenge the registration by filing a petition for cancellation against the trademark owner, arguing that the mark should not have been registered for being generic or descriptive. The trademark owner will have to decide whether outright enforcing their rights is worth the possibility of having their registration challenged.” 

Holidays and festivals generally come with bustling commercial activity where more trademarks in connection with such festivities emerge. These marks represent products and services in the market. They’re neither deceptive nor scandalous. And most of all, they’re distinctive and not merely descriptive.   

So, Valentine’s Day as a trademark? Sure!