Father Christmas or Saint Nicholas?

Father Christmas or Saint Nicholas? With this question, which was not merely significant from a design law perspective, the Higher Regional Court (OLG) Düsseldorf had to deal with some time ago.

The proprietor of a registered design (formerly: registered design) for a figure brought an action. It concerned a waving bearded man with a pointed hat. The design proprietor saw the distribution of an equally waving, bearded figure with a pointed hat as an infringement of her registered design.

At first instance, the distribution of the "Saint Nicholas figure" was prohibited in favour of the design proprietor. However, the Higher Regional Court (OLG) Düsseldorf took a different view.

Father Christmas is not Saint Nicholas

By means of judgment dated 14.02.2012 – AZ I-20 U 82/11 – the Higher Regional Court (OLG) Düsseldorf dismissed the action.

In its reasoning, the court set forth as follows:

"First, it must be established that the plaintiff's pattern, as well as the contested pattern, do not – as stated in the operative part of the contested judgment – depict a Saint Nicholas figure, but rather a Father Christmas figure. A Saint Nicholas figure would typically be depicted in episcopal vestments. By contrast, a Father Christmas is traditionally a usually portly, friendly old man with a long white beard, a red – previously more often green – coat trimmed with white fur, and a corresponding pointed hat. He is frequently depicted with a gift sack and a cane. This description shows that – even if the registered design does not reveal colours – both figures are clearly recognizable as Father Christmas."

As a result, the court saw no infringement of the registered design. Father Christmas figures have characteristic features. A figure must possess these features in order to be recognized as a depiction of Father Christmas. Through this, the designer's freedom of design would be substantially restricted.

Since the contested design had not adopted the distinctive features of the registered design, the court regarded the differences between the two figures as sufficient. The contested design creates a different overall impression on the informed user than the registered design.

Conclusion

Thus, the question regarding the essential characteristics of a Father Christmas should be settled. Should you encounter Father Christmas figures in the coming days that do not display these characteristics, you can accept the gifts nonetheless.

In that spirit: Merry Christmas!