Black Friday: wave of law suits on merchants in Germany?

In a few days’ time, “Black Friday” will start again in many countries. Under this term, retailers offer strongly reduced products for a few days or even just one day, especially in online sales. However, in Germany, this term has been registered as a registered trademark since December 2013. Is there a cancellation of the trademark or do we have to expect a wave of law suits being served on merchants?

The owner of the word mark 302013057574 is Super Union Holdings Ltd. of Hong Kong, which has registered the word mark for numerous retail services in the nizzas classes 9, 35 and 41. According to its own statements, the brand is licensed by Black Friday GmbH, which is based in Munich and operates the domain blackfridaysale.de.

Update from April 6, 2018

The German Patent and Trade Mark Office (DPMA) has decided to cancel the word mark “Black Friday”. As the operator of the website “Black-Friday.de” announced on April 5, 2018, the DPMA has thus complied with an application by the online portal and other parties. The statement of reasons states that “at the time of filing and continuously the obstacle to protection under Sec. 8 (1) MarkenG stands in the way”, since the term “Black Friday” is devoid of any distinctive character.

However, the owner of the trademark Black Friday – Super Union Holdings Ltd, Hong Kong – has announced to file an appeal with the Federal Patent Court against the planned cancellation of the trademark. The cancellation is not yet legally binding and this means that the trademark protection still exists for the time being.

Nevertheless, this is now a pending procedure, the decision to cancel the DPMA is well known. Any further warnings from the Black Friday trademark owner could possibly be challenged. If the deletion had also been confirmed in the subsequent appeal proceedings, it would possibly have been unjustified warnings and corresponding claims for damages would have been made possible. Please contact us in individual cases.

Black Friday warnings – how to you assess this?

As with any other trademark infringement, the owner of the trademark may, in the event of unauthorized use of the trademark by third parties, make a claim for injunctive relief in accordance with § 3.1 of the trademark law. Section 14.5 MarkenG (German Trademark Act). Any company advertising the term “Black Friday” in Germany therefore may be sued for injunctive relief.

In 2016, in fact, there were massive warnings against companies participating in the Black Friday sales promotion.

Usually, it was demanded that the infringement of the law should be avoided in future, that a cease-and-desist declaration was to be signed and that a contractual penalty should be paid. The contractual penalty of EUR 10,000 was relatively high and the object value of EUR 100,000 was also costly.

Update from November 9,2017: Black-Friday.de obtains temporary injunction against Black Friday GmbH

www.black-friday.de is a retailer portal that offers its customers special deals and a clear overview of the discounts on Black Friday. In November 2015, almost 1 million visitors visited the website Black-Friday.de, which was the highest value among all Black Friday portals.

The operators of the website black-friday. de, Gall Performance Marketing, have now obtained a preliminary injunction against Black Friday GmbH and Super Union Holdings Ltd. in Hong Kong with immediate effect before the Düsseldorf District Court, as became known on 9 November.

With the provisional injunction, the mentioned companies are prohibited from asserting their claims in writing and/or verbally against customers of Black-Friday.de,

(a) the use of the term “Black Friday” in their advertising; and/or

b) the listing of offers for sale on the website www.black-friday.de would constitute a violation of the German word mark “Black Friday” (register number: 302013057574).

(quotation of the website www.black-friday.de)

This means that all dealers who use the service of the retailer portal www.black-friday. de are initially legally protected against any warnings. This does not mean a cancellation of this trademark, but it may mean a temporary stop for the warning wave of last year.

Many requests for cancellation are currently underway

It is controversial that trademark protection for the term “Black Friday” exists at all. For this reason, a total of 14 requests for cancellation are currently underway, which were already received before this year’s Black Friday. The argumentation is clear: there is a need to keep the term free according to § 50 para. 1 MarkenG, especially for sales and advertising events. The applications require the cancellation according to §50 nullity because of absolute grounds for refusal. The German Patent and Trademark Office (DPMA) must examine the case and decide whether the trademark protection granted in 2013 has been rightfully or wrongly granted. A decision by the DPMA is no longer expected this year, and maybe not for a long time.

Get a warning – what to do?

If the cancellation proceedings are successful, the trademark “Black Friday” will be deleted from the trademark register. A warning notice or interim injunction in connection with the word mark can then no longer be claimed. Until then, however, the warnings must not be ignored. If the admonished party fails to submit the required cease-and-desist declaration, the trademark owner can take legal action and ultimately increase the cost risk many times over.

Is Black Friday a protected European Trade Mark, too?

Previous attempts to secure the famous term as an European trademark have already been rejected several times. Only the Spanish company EL CORTE INGLES, S. A. owns European trademark rights on “Black Friday”, because in their case the term was linked to their green logo.

The word and figurative trademark “Black Friday Sale” is interesting: the first attempt to obtain a European patent was rejected in 2014. The patent application was filed by King Trinity Holdings Ltd. However, a different application was admitted: since December 2016, Black Friday GmbH has been the European trademark owner for “Black Friday Sale”. And thus the licensee of the Hong Kong holding company’s controversial brand.