Ready to pounce on Black Friday sales? Well, so are retailers. The day after Thanksgiving has gained immense popularity as the time of the season where businesses slash grand prices off regularly priced goods. The term ‘Black Friday’ is widely and creatively utilised by businesses around the world to advertise sales during this holiday period, but should companies be wary of trademark infringement in marketing Black Friday promotions?
‘Black Friday’ A Registered Trademark in Germany
Indeed, ‘Black Friday’ as a phrase is not a free for all SEO tool, at least in countries such as Germany and Austria. In Germany, ‘Black Friday’ has been registered as a wordmark since 2013. The business holding the rights to the mark is reported as Super Union Holdings Ltd. of Hong Kong who registered the mark in classes 9, 35 and 41, and subsequently licensed the mark to a company based in Vienna, Austria named Black Friday GmbH.
Details of Super Union Holdings Ltd. claiming trademark infringement of the ‘Black Friday’ mark against various companies has been reported in 2016 and 2017. The company sent cease-and-desist letters to American e-commerce marketplace Groupon and the owner of domain black-friday.de in 2016. In the following year, Amazon got into trouble with the company for utilising the mark to promote sales across its platform.
Super Union Holdings Ltd.’s monopoly of the ‘Black Friday’ phrase in Germany and Austria did not go uncontested. At least seventeen varying businesses filed cancellation actions against the registered mark in late 2016. Ample evidence of prior use for the term ‘Black Friday’ alongside similar terms such as ‘Cyber Monday’ used by marketplace giants Amazon and Lidl were presented as evidence to support their cause.
Appeals and Final Decisions
An action of support finally came about in the spring of 2018. The German Patent and Trademark Office (DPMA) made the decision to remove the mark ‘Black Friday’ and claimed the mark lacked distinctive character for the main reason of cancellation. However, it is understood that although a cancellation has been issued for the mark, Super Union Holdings Ltd. still owned the rights to the mark at the time as DPMA’s decision was not legally effective. Appeals have been filed from both sides. 2 years later, ‘Black Friday’ became a free term to use for businesses in Germany in marketing promotions.
Worried about infringing upon somebody else’s mark? Look out for the ® sign for a registered trademark, or a ™ sign for a trademark in the process of being filed.
Still unsure? Get in touch for a top-to-toe trademark search conducted by our team of Intellectual Property professionals.