Black Friday TM lacks distinctiveness in Germany

The German Patent and Trademark Office has concluded that the term ‘Black Friday’ lacks distinctiveness, in a trademark dispute involving PayPal and a Hong Kong-based company.

According to law firm Hogan Lovells, brand agency Super Union had been trying to enforce its ‘Black Friday’ trademark on retailers for the past two years.

The term ‘Black Friday’ originated in the US. Traditionally, it is the last Friday of November—the day after Thanksgiving—where retailers offer significant sales. The promotional day has since been adopted by European retailers.

Retailers had allegedly received propositions for expensive licensing deals or had been issued with cease-and-desist letters, telling them not to use the term ‘Black Friday’ in their promotions.

To avoid litigation, many of the retailers resorted to alternative wording such as ‘Super Friday’, or moved their sales to ‘Cyber Monday’ (the following Monday), according to Hogan Lovells.

Cancellation applications filed by 13 retailers, including PayPal (which was represented by Hogan Lovells), Puma, New Yorker and Tom Tailor. The opposers cited evidence that the term ‘Black Friday’ has been used for a long time in Germany.

The trademark office said that when the trademark application was filed in 2013, the term ‘Black Friday’ had already become colloquial. Therefore, the office found that the mark lacked distinctiveness and did not identify commercial origin.

Alexander Hogertz, partner at Hogertz and representative of Super Union, said that the decision is not binding.

He noted that Super Union would file an appeal with the German Federal Patent Court and that the company is “confident” that the office’s decision will be repealed.

“The trademark is still registered and thus legally effective. The owner of the trademark will further pursue its rights against any possible infringements.” 

Anthonia Ghalamkarizadeh, counsel at Hogan Lovells, said that the successful parties delivered a blow in “dismantling a monopoly that was flawed from the start”.

“We can only hope that, upon appeal, the German Federal Patent court will expedite its proceedings, so that retail obtains legal certainty on the use of ‘Black Friday’ before the next sales day comes up on November 23, 2018,” she concluded.