Black Friday is the day after Thanksgiving when the holiday shopping season officially begins. Although this term has been used in the United States since the 1960s, it has recently been imported into Europe, where it has quickly become ubiquitous. What many do not know is that, on this side of the Atlantic, the expression is not completely free to use.
What is happening in Germany?
In recent years, many national and international retailers have been receiving letters from a company called Super Union Holdings demanding payment of a royalty in return for usage of the term. Super Union Holdings, a company based in Hong Kong, had in 2013 the "visionary" idea of registering the trademark "Black Friday" in Germany for sales services (class 35). The trademark was accepted by the German authorities because the expression, not yet widespread, complied with one of the main requirements for registrabilit: it was distinctive. Since then, this company has made requests to all kinds of companies (with more or less success) to pay a fee for using "Black Friday" and has even sued some - as was the case with Amazon.
Isn't this abusive?
Super Union Holdings is a company whose purpose and activities do not seem very clear, so we could consider it a "troll", that is, a company that accumulates intellectual property rights not in order to use them, but to extract rents from companies that do. These types of actors look for opportunities to register popular terms when they are not yet so, and this seems to be what has happened with Black Friday in Germany. In principle, this type of action is not protected by law, since the entity that receives from the privilege of a monopoly over an expression from the State (ie., a trademark), must be worthy of it by making good faith use of the same in the market. . Precisely, Super Union Holdings is being attacked by retailers in court not only for its lack of distinctiveness of the trademarks, but also for lack of genuine use.
And in the rest of Europe?
Super Union Holdings tried to replicate the strategy at the European level, although perhaps too late. The European Union Intellectual Property Office (EUIPO), which grants trademarks valid throughout the EU, rejected his trademark application on the grounds that the expression was already understood by the public as a mere slogan to promote discounts, not as an indicator of business origin. The EUIPO's position, very beneficial for the retail sector, has surely been possible thanks to the fact that the request was made in 2020, when Black Friday was already widely known and used by the public in a purely descriptive way. In this same vein, the EUIPO does admit Black Friday trademarks as long as they contain more elements that indicate the origin (for example, an "El Corte Inglés Black Friday" trademark has been successfully registered).
And what is the situation in Spain? In principle, one that could have been similar to the one in Germany, although with different results. A marketing agency called Cromek Systems was the first to register the term in 2014, when it was not yet a widespread concept. It currently has several Black Friday figurative tardemarks in place, the first with a stencil font and the second with white letters and a black background:
However, unlike Super Union Holdings, it seems that the focus of the owners of these brands has been to promote the Black Friday Barcelona small business platform and not try to obtain royalties from large distributors. In any case, these brands are obviously weak so it would not be wise to launch any legal battle based on them.
So, can I use Black Friday freely or not?
Yes, but with a few caveats. If we want to be careful, we must always use it descriptively to describe that day of sales and always in the presence of our own brand.
The situation in Germany is not yet clear, although everything indicates that Black Friday will finally be "liberated". Last month, the Berlin appeal court upheld the cancellation of Super Union Holdings' trademark on the basis of its lack of distinctiveness. Although there are still avenues for appeal, everything indicates that after many years of proceedings, Super Union Holdings will end up losing its rights.
It cannot be ruled out that situations like the one in Germany will arise elsewhere - in Spain, or in France, where "Black Friday" is registered by a Parisian advertising agency. In any case, given the weakness of the marks, the real risk of getting into trouble is low, and the EUIPO's indication in this regard should provide some legal certainty. And , in any case, we will always have "Cyber Monday".
Victoria Sofía Martín Santos
Esquivel & Martin Santos