Goodbye Trademark: Free ‘Black Friday’ Usage In Germany

One of the biggest days in the e-commerce calendar is approaching: Black Friday. As is custom every year, online shops are preparing their content. Over the past few years, Black Friday and Cyber Monday shopping events have grown tremendously in Germany. Looking at the numbers, German customers spent £5.7 billion (roughly 6.4 billion €) online and in-store in 2017, a huge uptick in comparison to the 1,7 billion €spent the year before.

Being excluded from such a lucrative marketing opportunity due to trademark issues has been an annoying obstacle for both local and international retailers in recent years.

WHAT WAS THE ISSUE?

Last year, for instance, Amazon was facing legal action in Germany for its use of the registered trademark “Black Friday” in previous years. The Hong Kong-based media and IP holding company Super Union Holdings Ltd has owned the trademark since 2013.

Thus, every retailer who wanted to use this term had to get a licence from Super Union Holdings or risk being indicted for impinging their trademark. In the event of any breach of this injunction, brands could have been fined up to 250,000 € in regulatory fees.

This commercialisation strategy caused a considerable stir in the German market. Retailers were looking for other free legal alternatives such as “Super Friday”, and shifted their sales to “Cyber Monday”. In addition, more than 13 cancellation requests were filed against the German trademark registration for the “Black Friday” term.

“BLACK FRIDAY” IS NO LONGER A TRADEMARK IN GERMANY – FOR NOW

Earlier this year, the German PTO decided that the phrase “Black Friday” falls into the public domain and thus, must be freely available to all market players to use for their sales promotions and in advertising. It also lacks distinctiveness and is not suited to identify commercial origin. In comparison to 2013 when this phrase became a trademark in the first place, it is nowadays colloquial and has become entrenched in the German market.

Although the PTO has given a green light for the usage of this phrase, and even Google has confirmed that content including “Black Friday” will not be refused or reported, it is also worth mentioning that this decision has already been appealed.