Black Friday Trademark Frenzy
As the popularity of the Black Friday has been rising steadily among the Spanish retailers over the past few years, so has the interest of the market operators in registering the shopping phrase at stake as trademark and enforcing it.
Slightly over a week before the beginning of the promotional sales, we learned of a cease and desist letter from an owner of a trademark BLACK FRIDAY asking our client to stop using the phrase in question on the market.
The letter was sent in spite of the risk of the trademark being cancelled for being non-distinctive or becoming generic in possible judicial proceedings.
In this regard, despite being an English phrase, it is quite safe to say that the Spanish consumers know what BLACK FRIDAY is and understand its meaning, due to the massive media coverage it has received in the recent years.
The first articles on the issue were published in the Spanish online newspapers back in 2005, although it was not until 2011/2012 that the topic started to be broadly covered by all the most important mass media.
Because of such generalized and descriptive use of the phrase Black Friday in Spain, those who managed to register it as trademark in the last 3-4 years would find it quite hard to maintain, in a possible judicial action, that that it has any distinctiveness or that it can function as an indicator of origin, at least in relation to advertising, marketing and promotional services in class 35.
The status of the trademark registrations consisting of or including the words BLACK FRIDAY with effects in Spain (Spanish, Community and International trademarks designating Spain) is quite interesting.
The oldest registered trademark including the words BLACK FRIDAY belongs to the well-known Spanish retailer El Corte Inglés and it was applied for in 2009 as Community trademark:
Then we have the following Spanish trademark , applied for and registered in 2014 that serves as a basis in the opposition proceedings, now in the appeal stage, against the Spanish trademark application for “BLACK FRIDAY LEROY MERLIN” owned by another big retailer.
Finally, we have spotted the recent Spanish trademarks for and, both registered by the same owner, the first one being opposed by El Corte Inglés. The opposition was dismissed and it is now appeal pending.
On the other hand, the OHIM has recently refused a trademark application for services in class 35 consisting of the following graphic representation:
And is also currently examining the registrability of the word mark BLACK FRIDAY and of following mixed trademark applications:
Curiously enough, the phrase CYBER MONDAY has been registered only once, as Spanish trademark, for online sales in class 35. The interesting part is that the application was filed as early as in 2008.
The generic use in Spain of the above mentioned phrase is probably less frequent than Black Friday. However, the registration is vulnerable to a non-use cancellation action.
Let´s see how many more similar defensive filings and unfounded claims are made next year.
Finally, Giving Tuesday, a movement started in 2012 as a response to the consumerism of Black Friday and Cyber Monday to encourage people to donate money or time to a good cause has not been yet embraced in Spain and thus there are no trademark registrations or applications for this phrase in particular.
Related Posts:
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (I): “Cointreau”
- “Acotel” Decision: the highest compensation granted by the Spanish Community Trademark Court to date
- Spain ran low in 2012 regarding National IP rights
- The Supreme Court confirms that, in the absence of a link in the mind of the consumer, the reputation of the earlier mark is irrelevant