In 2013, a trade mark application for Black Friday was filed in Germany. Today, the German trade mark is registered for Super Union Holdings Ltd., Hong Kong which has licensed the trade mark “Black Friday” to Black Friday GmbH, a company based in Vienna.
Since 2016, Super Union Holdings Ltd. has started to attack companies using the term Black Friday by sending warnings, such as the US e-commerce marketplace Groupon in 2016, as media reported. Another party concerned is a German entrepreneur who hosts the domain black-friday.de, a platform offering Black Friday deals.
In 2017, Super Union Holdings Ltd. sued Amazon for its use of the sign „Black Friday“ in Germany by raising, inter alia, forbearance and damage claims („Black Friday“ wird Fall für die Gerichte, Frankfurter Allgemeine Zeitung, November 6, 2017).
Of course, some companies, affected by the attacks of Super Union Holdings Ltd., have started to fire back. It is no surprise that there are more than twelve pending cancellation actions against the German trademark Black Friday. In addition, just recently a court in Düsseldorf / Germany has issued a preliminary injunction against Super Union Holdings Ltd. and its licensee Black Friday GmbH to refrain, inter alia, from claiming against clients of the operator of the aforementioned website black-friday.de, that the use of “Black Friday” in an ad is a trade mark infringement.
In Germany, the registration of a trade mark can be cancelled on request of any third party if it has been registered despite absolute grounds for refusal, e.g. if the mark is descriptive or does constitute an indication which needs to be kept freely available. So, what is your opinion?