Find out today what the legal world will be talking about tomorrow.
Black Friday, Cyber Monday and Singles Day - How can I actually advertise my discounts now?
What do we mean by Black Friday, Cyber Monday, Singles Day?
The terms "Black Friday", "Cyber Monday" and "Singles Day" originate from the USA and refer to extensive discount campaigns that traditionally mark the start of Christmas business in the retail sector at the end of November. For many years, retailers in Germany have also been advertising Black Friday, Cyber Monday and Singles Day sales offers.
This year, the sales events fall on 11.11. (Singles Day), 24.11. (Black Friday) and 28.11. (Cyber Monday).
Is the term "Black Friday" protected under trademark law?
In 2013, the word mark "Black Friday" was registered in Germany for various terms, including "retail services via the Internet". After numerous cancellation requests, the Federal Patent Court (BPatG) ordered the partial cancellation of the trademark for advertising and retail services. This was because it was already foreseeable at the time of the application that the term "Black Friday" would establish itself in the future as a common catchword for discount campaigns. The Federal Court of Justice confirmed the decision of the BPatG.
What happened next?
On October 14, 2022, the Berlin Appellate Court (Case No. 5 U 46/21) ruled that the trademark "Black Friday" is to be revoked in its entirety for all goods and services still registered with effect from April 25, 2019. Thus, the trademark is to be cancelled in its entirety.
Background: compulsory use! According to German and EU trademark law, trademarks must be used after a five-year period. This means that the trademark must be used for each individual protected product or service. The trademark owner of "Black Friday" was not able to prove this right-preserving use.
The decision is not yet final, and the trademark owner can still appeal to the Federal Court of Justice (BGH).
What about the trademark protection of similar terms such as "Cyber Monday" or "Singles Day"?
Registration of the trademark "Cyber Monday" has already failed several times in Germany.
However, the term "Singles Day" has been registered for retail and advertising services and for jewelry, among other things.
Who is allowed to advertise with "Black Friday" and Singles Day?
Even if a trademark is (still) registered for certain areas of protection, this does not necessarily mean that the term may not be used to advertise discount promotions.
Trademarks generally serve as an indication of origin and are intended to enable the assignment of goods or services to a specific provider.
If terms such as "Black Friday" are only used as a general reference to discount promotions and sales events in the retail trade and not as a reference to a specific company behind them, this does not in principle fall within the scope of protection under trademark law.
In a nutshell:
What do advertisers and companies need to keep in mind when advertising with Black Friday, Singles Day and Cyber Monday?
- No use of the terms to refer to a specific company
- Not use of the terms to distinguish goods and/or services from one another
- Mere general reference to retail sales events