IP ENSight | 6 December 2017

Black Friday: is it a trade mark?

by Gerard Du Toit

Black Friday tends to lead to unseemly physical scuffles. But, somewhat unexpectedly, this year’s Black Friday also resulted in some interesting trade mark scuffles!

Black Friday, the retail and marketing phenomenon that originated in the US before spreading to much of the world, officially happened on 24 November 2017, although many readers will have noted that this particular Friday seems to go on for the best part of a week. For the benefit of those unfortunates who don’t do shopping, Black Friday is a (slightly desperate!) marketing exercise where retailers discount goods on the first Friday following Thanksgiving, seemingly in an attempt to tide them over until the shopping bonanza that happens in December. Black Friday is a particularly big thing in online shopping, but it also plays a significant role in old-school brick-and-mortar shopping.

Black Friday 2017 does seem to have been a commercial success – it’s reported that UK retailers had a bumper day. But in South Africa, there were some ugly scenes, with desperate bargain hunters fighting among themselves, breaking shop windows and damaging security monitors in the process. Security staff, like the shoppers, had their hands full. Whatever you may think about Black Friday, it has undoubtedly become a very big deal.

Trade mark law is also a big deal. But what does it have to do with Black Friday? Well, to the surprise of many, it turns out that the term Black Friday is registered as a trade mark in Germany. The name was registered back in 2013 by a Hong Kong company called Super Union Holdings Ltd, and it’s registered in three classes: 9 (electronic goods), 35 (business services) and 41 (information services). The trade mark has been licensed to a Munich-based company called Black Friday GmbH. 

In 2016, the owner of the trade mark first started flexing its muscles, threatening Groupon with trade mark proceedings following Groupon’s use of the term Black Friday. In 2017, the company went one step further, instituting trade mark infringement proceedings against Amazon. These developments have come as a shock to many – apparently, Deutsche Bank even informs its clients that Black Friday is a very important day in the German business calendar.

The legal issues surrounding Black Friday have certainly kept German lawyers busy. There has been a massive response to the prospect of trade mark infringement proceedings, with no fewer than 14 different companies applying to cancel the trade mark registration. The argument in those cases will be that Black Friday isn’t distinctive of one company’s goods or services because it has been used by multiple companies for a number of years – it seems that Apple may have been the first to use the term in Germany, and that others quickly followed suit. There may even be arguments about whether the term is used as a trade mark at all. 

Moreover, the owner of a Black Friday aggregator site, www.black-friday.de, has obtained a preliminary court order (injunction) that stops the owner of the Black Friday trade mark registration from threatening companies that use the site. The owner of the trade mark registration has responded by obtaining a preliminary injunction that prohibits the owner of the website from publicising the preliminary injunction it obtained. It all sounds very messy!

I’m not aware of any trade mark registration for the term Black Friday in South Africa, and I think it’s highly unlikely that it could be registered now, given that it is clearly a generic term. The same would, I think, apply in much of the world, and reports suggest that a European trade mark application for Black Friday failed, although a Spanish company apparently has a registration for a trade mark that features the expression Black Friday together with a logo. The very essence of a trade mark, of course, is that it identifies the goods or services of a single business, and the term Black Friday is clearly no longer capable of doing that. But, it is conceivable that the term could have been registered as a trade mark a number of years ago, most likely in class 35 for a range of marketing, advertising and retail promotion-related services. It’s equally conceivable that the intention of the company registering it would have been to license it to individual retailers once a year.

What the trade mark issue in Germany does highlight is how dangerous it is to take things for granted. It’s risky to assume that, simply because a word, expression or logo is widely used, it must be available for use. The best bet is to get advice from a specialist lawyer, who can immediately run a search to see whether any legal issues are likely to arise. Yes, there is a cost involved in seeking advice, but it’s nothing like the cost involved in defending a trade mark infringement case.


Reviewed by Ilse du Plessis, a director in ENSafrica’s IP department. 


 

Gerard du Toit

IP | senior associate
gedutoit@ENSafrica.com
cell: +27 82 885 3337

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