Can “Black Friday” be a brand? The Federal Patent Court in Germany says “maybe for some branches”.

Black Friday is generally known as the name for a sales-day in the pre-Christmas business in the US on Friday after Thanksgiving. It is also known in Europe for some years now – and that’s what it’s all about in the Germany case. Because the company Super Union Holdings Ltd. from Hong Kong registered the word mark “Black Friday” a trademark in Germany and many other countries and sent warning letters to numerous companies, which had not acquired a “license”.

First of all, the word mark “Black Friday” (IR 1378808) has been cancelled in Austria some time ago. So, there is no issue in Austria.

In Germany, the invalidity proceedings against the trademark mark are still pending and, yesterday, a hearing took place at the Federal Patent Court in Munich. Companies such as PayPal, Puma and numerous other companies have applied to the German Patent Office for the cancellation of the “Black Friday” trademark with the German Patent and Trademark Office, which, in fact, declared the trademark as invalid. The trademark owner, Super Union Holdings Ltd., filed an appeal against the invalidation with the German Federal Patent Court. The hereing there seemed to have been somewhat turbulent – one of the applicants, who had requested the invalidation of the trademark, collapsed on a statement by the presiding judge.

Though, the judges at the Federal Patent Court have analysed this matter with German thoroughness:

In short, the judges, in fact, see chances for the word-mark “Black Friday” to be upheld. For the court it is decisive how the German average consumer understood the word “Black Friday” at the time of filing in 2013. According to the judges, the German public understood this term not – as the US-Americans would have – primarily as a buzzword for a discount action day, but at best connected with the stock market crash in 1929. In 2013 there were hardly any press reports in Germany about a sales day called “Black Friday”, hardly any Google-searches etc.

However, and this is crucial, this evaluation does not apply to all branches, especially not for the electrical and electronics goods sector there would be a need to keep this term free most probably, according to the court.  In our humble view, this also applies for the clothing industry.

The Federal Patent Court will now scrutinize this issue very closely (there are more than 15 binder to work through), and identify for each branch, if and to what extent the name “Black Friday” was already known in that area or can be considered an indication of origin for the trademark owner. That’s not an easy task. It is, therefore, open, when to expect the written decision.  

However, it is expected that the word mark “Black Friday” will be upheld for a subset of the goods and services.

But even so, the company Super Union might not be able to undifferentiatedly claim royalties or cease-and-desist demands. For, nowadays, the term “Black Friday” is clearly also known in Europe as a descriptive statement for a shopping day. The use of e.g. “Sale on Black Friday” therefore, in our view, does not constitute a violation of the trademark rights. Moreover, it is questionable whether the company – if trademark infringement is given at all – can demand high royalties, as this is a classic secondary branding. In addition – as stated, nowadays – is not distinctive. This has to be considered in the assessment of royalties: i.e. whether the consumer, when he is confronted with “Black Friday”, thinks of the shopping day, or makes a connection to the company Super Union – the latter is probably not the case.

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