The American online store Amazon is being sued in Germany by Super Union Holdings Ltd. (hereinafter: ‘Super Union’) from Hong Kong in connection with infringement of the trademark Black Friday.
Every year, on the fourth Thursday of November, the United States celebrates Thanksgiving. After everyone has feasted on turkey, mashed potatoes and gravy, many stores open their doors from midnight for the biggest shopping event of the year: Black Friday. Shopkeepers try to attract consumers to their shops with spectacular offers, leading to immense chaos each year.
Traditionally, Black Friday is considered an American event. Like so many other things imported from the United States, we see more and more European companies capitalise on the American bargain hunt in recent years. Therefore, it should surprise no one that Black Friday is also celebrated extensively on the German Amazon website.
Super Union is currently accusing Amazon of infringement. In 2013, Super Union had succeeded in obtaining the German trademark registration for Black Friday, for inter alia retail services. Subsequently, Super Union has issued a license to Black Friday GmbH. This party organises Black Friday sales on its website www.blackfridaysale.de. Super Union now claims that the Black Friday offers announced on the German Amazon site infringe upon its trademark rights. The company from Hong Kong’s claims includes a halt to the infringement and demands damages of €250,000.
At first glance, it seems perhaps strange that Super Union was able to protect the trademark Black Friday in Germany. After all, Black Friday is a generic term and therefore cannot be monopolised by anyone. However, one should not forget that Black Friday in Europe is actually a concept that was adopted in recent years and that most likely prior to 2013 very few Germans heard of it. Therefore, the trademark Black Friday most likely had sufficient distinctive character in Germany at the time to qualify for trademark protection.
However, the real question is whether nowadays the German consumer still views Black Friday as a distinctive trademark. We are actually convinced that by now, also in Germany, the consumer is familiar with all the offers on the day after ‘turkey day’. In other words, the German consumer no longer views Black Friday as a general term. It seems that very shortly Black Friday has become a generic name in Germany. This will mean that no one will be able to claim sole rights to this term.
Most likely, Amazon will do everything possible to settle this issue in order to avoid that their Black Friday pages are greyed out. However, if this is actually litigated, then Amazon will plea with the assertion that Black Friday has become a generic term and that the use of the term Black Friday on its website does not infringe upon the rights of Super Union. It can be assumed that Amazon will submit a counterclaim in which it will invoke the cancellation of the registration of Super Union based on the fact that Black Friday has become a generic term.
The outcome of this issue is not only tense for Amazon, but also for all other web shops in German that nowadays advertise Black Friday offers. No doubt, this will be a continuing story.