IP Information & News

Black Friday™ — infringing the trade mark of a retail phenomenon

Gareth Price

By Gareth Price

Partner

The day following Thanksgiving has traditionally been a day of sales in the US retail sector. Stores see individuals queuing on the streets (and sometimes fighting in the aisles) to get their hands on the best deals. Today, the phenomenon of Black Friday has spread globally to something we’re all familiar with, thanks to digital retail giants like Amazon.

Black Friday™?

I was recently asked by a German client in the retail sector if it could use the term ‘Black Friday’ in relation to its in-store and online sales activities in late November. My client had heard a rumour that the use of this term had been subject to litigation.

On the face of it, the term ‘Black Friday’ would appear to be descriptive of the Friday following Thanksgiving and not something that anyone could register as a trade mark.

However, to my surprise, I discovered that Super Union Holdings Ltd, a Chinese company, had registered the term Black Friday as a trade mark in Germany. The application had been filed in October 2013 and registered for a range of goods including marketing and retail services.

Bargain injunctions

A trade mark registration gives the owner the exclusive right to use that trade mark and prevent others from using it.

In Germany, if a claimant acts swiftly on discovering an infringement, it’s possible to seek a preliminary injunction preventing use and covering damages and costs. As Germany operates a ‘bifurcated’ system for IP infringement claims, this means that the defendant cannot counterclaim for invalidity in infringement proceedings. Instead, invalidity proceedings need to be brought separately.

Super Union Holdings Ltd had threatened the likes of Amazon and Groupon over the use of Black Friday in Germany, seeking payment of a licence fee to avoid infringement proceedings. Following these threats, invalidity proceedings were commenced by 15 separate parties in Germany. This failed to stop the behaviour of Super Union Holdings Ltd and its licensee, Black Friday GmbH, who continued to try and extract licence fees from online retailers.

Back to black

In November 2017, in proceedings against Super Union Holdings Ltd and licensee Black Friday GmbH, a court in Düsseldorf issued a preliminary injunction refraining, inter alia, them from claiming against the operator of the website www.black-friday.de that the use of “Black Friday” in an advertisement amounted to trade mark infringement.

It seems highly likely that the German trade mark registration for BLACK FRIDAY will be cancelled in due course. The fact that a registration was obtained in the first place is a reminder of the importance of conducting searches in all of the territories where you wish to operate. It’s worth bearing in mind that legal proceedings differ from country to country and this needs to be considered when assessing the risks of launching a brand or using a term as a trade mark.

If you need to seek help to protect your brand or advise you in infringement matters, get in touch with me at gip@udl.co.uk.

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