At MacLachlan & Donaldson, we maintain that everyone has IP, even if they don’t know about it. Even Santa Claus might need to consider IP protection after a busy year of toy creation:
“Ok, Mr Claus we have a lot to discuss regarding the protection of your Intellectual Property (IP).
I note that, by limiting the number of persons in the know and through judicious use of Non-Disclosure Agreements, you have taken steps to create trade secrets for the method by which you are able to travel so fast, circumvent security systems and enter dwellings. . That’s great
I understand that the Elves have been busy this near inventing new toys to deliver to all the children. I assume you’ve had all the necessary clearance searches done to make sure you are not infringing existing IP? If not, that needs to be done as soon as possible as a first step.
Then we need to identify which of these new toys is novel, involves an inventive step and is industrially applicable in order to get the patents filed to be able to prevent other from manufacturing them. We will need the patent applications filed before Christmas Eve so that the novelty in the invention, or improvement, isn’t destroyed by the public disclosure of the product. Since they were invented by the Elves in your employ, we’ll also need to get those involved to sign Employee Rights Acknowledgements.
Also, if any of the new toys have a novel shape or appearance, it may be worth protecting that by filing design registrations. Not so much an urgency on that, as we have 12 months from the time the products enter the public domain, but best to get it sorted as soon as possible.
Then, of course, you’ll need to consider protecting the signs which you are going to use to distinguish the toys as originating from you, those badges of origin, that is the names, logos, slogans, etc.. You can do this by registering them as trade marks in all the countries you are going to be offering the goods. We always say better to protect before you promote so let’s get that started as early as possible too.
I think we also need to talk about the number of persons out there passing themselves off as you. Children everywhere are lining up to meet “Santa Claus”, and to be entertained by, and receive a gift from, him but the majority are imitators. In many countries you have accrued significant goodwill in the names Santa Claus and Father Christmas. The use of those names in combination with individuals dressing up in imitation costumes, even going as far as to don artificial whiskers, misrepresents that the services they are offering, i.e., entertaining children and delivering gifts, are from you. Children everywhere are being deceived into believing they have met with the “real” Santa Claus. This could substantially damage your reputation. In many jurisdictions, we could take passing-off action to prevent the continuation of these activities.
Tackling the use of your name and image on merchandise may also be an option. Companies use the names Santa Claus and Father Christmas left right and centre to promote their products. Look at Coca Cola, they have used your image so much that they have had a tangible effect on the way consumers view you. Instead of your green robes and stern demeanour, consumers see you as a happy go lucky figure dressed in red and white. Your image is used in such a way by them that it suggests you have more than a passing-acquaintance with the Coca Cola beverage, that you actually endorse their products.
Lastly, since copyright may automatically have come into existence upon the creation of your ‘Naughty or Nice List’, I recommend placing the copyright symbol along with the year and your name on the document as a warning that that copying such an important document, which has taken time and effort to compile, would be a breach of your copyright.”
Have you, like Mr Claus, invented anything this year? Does your business have a mark which should be registered as a trade mark? Contact MacLachlan & Donaldson at firstname.lastname@example.org or email@example.com and our attorneys can help you manage your IP.