This instalment of The Santa Claus Letters has been kindly contributed by In House Hotshot, an in house IP lawyer, tweeter and blogger.
ELVISH IP
Patents * Trade Marks * Designs * Copyright
1 Polar Bear House, Santa Claus Lane, The North Pole
Head of Legal
Lapland Shopping Centre
St Nicholas Street
The North Pole
16 December 2011
Dear Sirs,
INTELLECTUAL PROPERTY INFRINGEMENT
We act on behalf of the Santa Claus Group, one of the world’s leading and most widely recognised semi-philanthropic gift manufacturers and sleigh-borne delivery companies. The business, which was previously known as Father Christmas Inc, has traded continually since 1458 and now consists of several group companies including Santa plc, Rudolph Logistics Limited and Elf Enterprises Limited. We are responsible for the protection of all Santa Claus Group brands throughout the world.
It has come to our attention that you have been using out client’s intellectual property in an unauthorised and infringing manner. If this use does not cease immediately we will have no option but to bring the infringements to an end by means of legal action.
TRADE MARK INFRINGEMENT
Our client is the owner of a number of registered and unregistered trade marks including, but not limited to:
- “SANTA”, “SANTA CLAUS”, “HO! HO! HO!”, and the Jolly Fat Man in a Red Suit device, all in the name of Santa plc;
- “RUDOLPH”, “RUDOLPH THE RED NOSED REINDEER” and the Red Nosed Reindeer device, all in the name of Rudolph Logistics Limited; and
- “ELF MAGIC” and “MADE BY ELVES” in the name of Elf Enterprises Limited.
(Hereinafter the “Santa Claus Marks”)
These registrations cover a wide range of goods and services including, but not limited to:
- Class 6 – Bells for animals, namely reindeer; animal collars (fur-lined);
- Class 9 – Surveillance apparatus (sleep monitoring devices and good/bad distinction devices);
- Class 12 – Sleighs;
- Class 28 – Children’s toys;
- Class 35 – Lists (compilation of); lists (checking of); lists (checking of for a second time);
- Class 37 – Manufacture and repair of toys (specifically by means of elf-magic);
- Class 39 – Arranging delivery of gifts (by air); delivery of gifts (by air); distribution of goods (mainly toys);
- Class 41 – Entertainment and cultural activities, exhibiting of animals (namely reindeer);
- Class 45 – Surveillance systems provided by elf magic; surveillance of children (for determination of behavioural nature and categorising on the St Nick Naughty/Nice scale).
(Together the “Santa Claus Goods and Services”).
We note that you have been using the Santa Claus Marks to promote your services at the Lapland Shopping Centre, St Nicholas Street, The North Pole. Your use extends to the use of “Santa”, “Santa Claus”, “Ho! Ho! Ho!” and the Jolly Fat Man in a Red Suit device to promote, inter alia, the distribution of toys, list-making, and the provision of entertainment and cultural activities, as well as related retail services.
At no time has our client authorised your use of the Santa Claus Marks in this way and as a result, your use amounts to an infringement of our client’s trade marks.
PASSING OFF
Your use of identical marks in relation to identical services also indicates that you deliberately intend to confuse the public and take advantage of our client’s goodwill and reputation by suggesting that the goods and services of the Lapland Shopping Centre are in some way connected with, or endorsed by, our client. This amounts to passing off.
In the event that you continue to use the infringing materials to promote your tawdry and non-magical retail services our client is likely to suffer a loss in mince pie, sherry and carrot revenue and will also suffer damage to its extensive (and expansive) reputation as both actual and potential customers may believe that they are dealing with our client or a business endorsed by them.
In addition, customers may not return to our client in the future as a result of any negative impressions of your business (including those related to kissing mothers under mistletoe). This is a particularly significant consideration in an already overcrowded present-provision industry where customer service, discretion and reliability are of utmost importance.
COPYRIGHT INFRINGEMENT
Our further investigation into your trade mark infringement, as set out above, has also led us to discover your infringement of our client’s copyright in their proprietary dramatic work (hereinafter the “Santa Claus Performance”). The Santa Claus Performance is a well-known dramatic work with the following distinguishing and internationally protected features:
- Jolly male lead character in a red fur suit (see also trade mark infringement of jolly fat man in red suit device referred to above), with twinkling eyes, merry dimples, cheeks like roses and a nose like a cherry, droll little mouth drawn up like a bow, beard on chin as white as the snow, stump of a pipe held tight in his teeth (with optional smoke encircling head like a wreath depending on jurisdiction and related smoking legislation), round belly that shakes when he laughs (similar in nature to a bowl full of jelly) and ability to ascend and descend chimneys and similar flue-related items by means of laying his finger aside of his nose.
- Scenery including grotto, stacks of presents, reindeer-driven sleigh;
- Supporting cast of green and red-clad elves with pointy ears, long noses and pointy hats and shoes;
- Script featuring key distinctive elements including “Ho! Ho! Ho!” (see also infringement of trade mark of “HO! HO! HO!” referred to above), “Happy Christmas” and “Happy Christmas to all and to all a goodnight”.
Your performance of “visit Santa’s Grotto” on level one of the Lapland Shopping Centre (opposite Elf-Pound Land) clearly constitutes the infringing acts of performing and making adaptations to our client’s original dramatic work, the Santa Claus Performance, without the authorisation of our client as the copyright owner.
In the circumstances, the infringing acts detailed above are unacceptable to our client and entitle us to commence infringement and passing off proceedings against you to seek, amongst other remedies, injunctions, compensation and legal costs.
In order to avoid proceedings for infringement you should provide the following undertakings:
- You will cease and desist from using the Santa Claus Marks in the course of trade in relation to the Santa Claus Goods and Services;
- You will cease and desist from passing off your services as connected to those of our client;
- You will cease and desist from performing the Santa Claus Performance or related dramatic works;
- You will refrain from using the Santa Claus Marks, performing the Santa Claus Performance and using any other intellectual property belonging to the Santa Claus Group in future, without our client’s prior written consent.
Please provide the undertakings by 5pm on Friday 23 December 2011. If the signed undertakings are not received by us by this date, we may commence infringement proceedings against you without further notice. In the meantime we reserve all of our client’s rights.
Yours Faithfully,
Elvish IP LLP
The Bizzle 
You do not specify on which register your marks are registered. However that is immaterial as none of your activities are in the course of trade and therefore any registrations you may have are revocable for want of use. Morevoer all our activites are conducted in the realms of magic where trademarks have no effect and even in the North Pole we submit to no land locked legal jurisdcition. I believe I am obliged to tell you that my client is funded by the Polar Explorers society _ our only consumers and an account of our profits would be nugatory but if you tell us more we can talk about it later (@neildenny)
Moreover, your threat to commence proceedings in relation to the promotion of services constitutes a groundless threat of trade mark infringement under section 21 of the Trade Marks Act 1994. As a person aggrieved by this groundless threat our client is entitled to commence proceedings and obtain damages and an injunction to prevent the repetition of these threats. We reserve all of our client’s rights in this regard.