In a nutshell:
|Depending on your jurisdiction Black Friday may be a protected trademark. Using this term could constitute an infringement and result in legal proceedings. Make sure to clear the terms you want to use in your advertising campaign - even if they appear to be non-distinctive to you. In doubt, ask a specialized lawyer for support.|
You might be surprised, but in the past years, many companies have received warning letters in the context of their use of the term Black Friday in advertising for special sales offers in Germany. Facebook pages and Twitter accounts promoting Black Friday Sales were blocked and Black Friday Google Apps deleted. Why is that and can you promote Black Friday sales this year again or do you have to fear a warning letter for illegitimate use of Black Friday or similar terms?
Black Friday - a protected sign?
In the United States, Black Friday refers to the day after the US holiday of Thanksgiving, regarded as the first day of the Christmas shopping season, during which retailers advertise various special offers. As with other American traditions such as Halloween, Black Friday sloshed across the pond, and in recent years more and more European retailers have copied this sales tradition. So, why should a descriptive term like 'Black Friday' not be available for use in connection with special sales offers during this time of the year?
The fear and issue regarding the use of Black Friday (or similar signs) originate in Germany. In 2013, the German Patent and Trade Mark Office (DPMA) registered the sign Black Friday as a word mark in the name of a Hong Kong company for retail services and entertainment services in Classes 35 and 41 (German Reg. No. 302013057574) - and thus granted the trade mark owner a certain 'monopoly'.
In the past years, the trade mark owner and its licensee (which operates the website www.blackfridaysale.de) sent warning letters to a large number of companies claiming that their use of Black Friday in advertising for sales offers infringed their trade mark rights in the German word mark Black Friday.
Some of the companies that had been warned simply refrained from using the term Black Friday (out of concern about possible infringement proceedings), but others defended themselves and even filed an application for cancellation of the Black Friday trade mark with the DPMA claiming that Black Friday is not distinctive and not capable of being trade mark protected. In total, 16 cancellation requests were filed by different third parties.
In March 2018, the DPMA decided that Black Friday is purely descriptive and belongs to the public domain, and ordered the cancellation of the German trade mark registration for Black Friday. But the trademark owner filed an appeal against this decision with the German Federal Patent Court (Bundespatentgericht), and the case is still pending. While it is expected that the German Federal Patent Court will support the decision of the DPMA and reject the appeal, the trade mark owner already announced that it intends to exhaust all legal remedies. Thus, it may well be that a certain legal uncertainty in Germany would persist for a few more years.
What does this mean for your Black Friday advertising campaign?
So will you be receiving a warning letter when you promote 'Black Friday Sales'?
If you plan advertising campaigns in Germany and/or targeting German consumers on your foreign websites, you should certainly be aware that there is still a risk that the owner of the Black Friday trademark might claim rights in the not yet cancelled German trade mark Black Friday, and send a demand letter. In view of the (not yet final) decision of the DPMA, this risk is lower than it was in the former years, but it still exists.
If you are operating outside of Germany, and are not targeting German consumers, you may most likely lay back. Trademark protection follows the principle of territoriality, and for example in Switzerland Black Friday is not trade mark protected. This means that in Switzerland anyone can use this term in advertising.
But be careful when your creative marketing colleagues propose to use a play of words or a variation of Black Friday! For example, in Germany the sign Friyay is protected among others for marketing and online advertising services in Class 35, meaning that the use of Black Friday in advertising addressing German consumers may be problematic. Other signs that benefit from trade mark protection and may not be available for use are for instance Super Friday (European Union and Japan), Black Night (France, Brazil, Uruguay) or Funday (UK and Russia).
So what can you do?
Do not let prior rights surprise you! When planning the roll-out of an advertising campaign/offer in connection with Black Friday, consider the following at an early stage in your development process:
- Verify whether the term Black Friday, or the variation you want to use, is trademark protected in your jurisdiction.
In doubt, and especially in case of a substantive roll-out, seek the assistance of a lawyer in the relevant jurisdiction(s) to clear the intended use of the signs you plan to use.