Navigating Trademarks and Holidays: Can Holiday Names be Registered?
As the year draws to a close, the holiday season brings with it the traditional symbols – from Santa Claus and Christmas trees to menorahs and more. For those immersed in trademark registration, a pertinent question arises: Can holiday names themselves be registered as trademarks, or as part of a trademark? And what about the incorporation of holiday symbols?
A trademark stands as a cornerstone in brand building, granting a unique right to its owner and protection against infringement. More than just a symbol, it serves as a key identifier for a business’s products or services, playing a crucial role in shaping its reputation.
Trademarks can take various forms – letters, numbers, words, figures, sounds, or combinations thereof – designed to distinguish goods or services and be an origin identifier for customers.
During festive seasons, businesses may seek to include holiday names or phrases like “New Year,” “Hanukkah,” or “Christmas” in their trademarks. The question arises: Can these additions be registered, granting exclusive usage rights to the mark’s owner?
In Israel, as in many parts of the world, the Trademark Ordinance does not prohibit the use of holiday names in trademarks. However, the key condition is that the mark containing the holiday name must function as a trademark – meaning, being able to identify the origin of goods, meet the ordinance requirements, be non-descriptive of the goods or services, and, of course, be available for registration.
For example, Israel has a few trademark registrations incorporating the word “Christmas,” such as “BALLANTINE’S CHRISTMAS RESERVE” for alcoholic beverages, and “feeric lights & christmas” for toiletry products, candles, decorative art, etc.
Trademarks including the words “Silvester” and “Novy God” have been registered worldwide. For example, in India, the mark “SILVESTER” was registered for footwear, and a mark including the words “Novy God” was registered in Russia for sewing products.
The desire to register a trademark that includes holiday names can sometimes be accompanied by the desire to include religious symbols, for example, in a stylized logo. Precisely here is the place to point out that section 11(7) of the Israel Trademark Ordinance explicitly states that, “A mark identical to a symbol of religious significance only or a mark similar to it, cannot be registered”. The purpose of this provision is to prevent harm to the feelings of a religious public and, in addition, to leave the use of these symbols in the public domain. As mentioned, a trademark that includes a symbol of religious significance only, may fall under one of the provisions outlined in Section 11 of the Ordinance, which establishes a list of marks that cannot be registered. For example, a trademark that includes a cross, the Tablets of the Covenant, the word Messiah, or any other religious symbol, may not register if we rely only on the words of the law.
In this regard, it should be noted that in practice, marks that include religious symbols are disqualified for registration, usually when it comes to significant damage, with near certainty, to the relevant religious public or when there is value in keeping the mark open to the public. In addition, when a trademark includes a religious symbol, but it does not have a religious meaning only or the damage is minor, it is possible that the mark, despite the provision outlined in section 11(7), will be approved for registration.
In conclusion, it is important to emphasize that even if your trademark fulfills all the necessary criteria for registration, it is advisable to conduct an availability search. This search aims to confirm that the mark is eligible for registration within the pertinent domain, aligns with legal requirements and precedents, and, of course, does not encroach upon an already registered trademark that is identical or closely resembling your intended mark for registration, thereby avoiding potential confusion.
We hope that the trademarks you select for registration are those with a high probability of successful registration. Additionally, we wish you a Happy New Year!
*Disclaimer: The information in this article does not constitute legal advice. Readers are encouraged to consult with a lawyer in the relevant field for tailored guidance. *
