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Warning over use of “Black Friday” or “Cyber Monday” in the Turkish market

The registrability of “Black Friday”, which refers to the famous sales-day in the US on the day after Thanksgiving, has been discussed in Europe for a while. In a guest post for Class 46, Yasemin Aktas provides a perspective from Turkey.

In a case is in Germany, Hong-Kong based Super Union Holdings Ltd registered “Black Friday” in 2016. It started to try to prevent its use by other retailers in Germany and offered them expensive licensing deals. Some companies including PayPal, Puma and Designer Outlet started invalidity proceedings against the registration before the German Patent and Trademark Office which ended with invalidation of the mark due to lacking distinctiveness and becoming colloquial in Germany in 2013.

The registrant appealed the decision before the German Federal Patent Court and at the last hearing, the judges decided to search for the German average consumer’s understanding of “Black Friday” on the filing date of the application (which is in 2013) to make the distinctiveness evaluation. Plus, they declared that the cited search and the distinctiveness examination need to be made for each branch separately. The Court will now make these detailed searches and evaluations to issue its verdict.

Situation in Turkey

In Turkey, the registrability of “Black Friday” has never been discussed by the courts according to our knowledge. However, this term has been registered by some local persons before the Turkish Patent Office a few times and on top of that one of them (trade mark registration number 2011 116299) covers retail sale services for almost all goods in Nice classes 01 to 34 from electronics to clothing and from cosmetics to household goods, although the others do not.

In recent years, the use of “Black Friday” for sale campaigns in the last week of November became very popular in Turkey and many local and foreign retailers have been using it actively. This registrant has not taken any actions against these users yet that does not mean that he would never do it.  

In a potential infringement action, the registrant may claim determination, prevention and cessation of the infringement, removal and destruction of infringing products and materials and claim for material and moral damages.

Defensive options

According to the Turkish IP Code, a trade mark registration gives absolute rights to its owner until it is invalidated, but the invalidity applies retrospectively with a few exceptions not concerning pending infringement claims. Thus, the first defence option that the retailers would have against the infringement claims would be to claim invalidation of the mark as a counter action. In such a case, examination and conclusion of the invalidation claims would be made a prejudicial question for examination of the infringement claims and the infringement claims would remain baseless if the mark is invalidated in the end.

What else the retailers can do would be to launch a non-use defence against the infringement claims, since the five years’ grace period for compulsory use of the cited mark has expired in 2018. If the registrant cannot prove the use of its mark for any branches, his infringement claims would be refused for them without being examined. They can also claim non-use cancellation of the mark, yet this claim would not be a defence option, since non-use cancellation decisions are not retroactive.

Additionally, the retailers may argue that Turkish customers would never consider “Black Friday” as a reference to the source of the products (as a mark), but as a name of the famous sale campaign in these days. Therefore, they may claim that use of “Black Friday” on the sale campaigns does not constitute trade mark infringement.

However, the Turkish IP courts usually tend to protect registered marks against their identical use on the same/similar goods/services regardless of the distinctiveness level of the mark on its filing date or on the filing date of the infringement action.

Moreover, the filing date of the Black Friday registration was in 2011 when the US sales campaigns were not commonly known by Turkish customers. That favours the registrant in both infringement and counter invalidation claims in our opinion.

Still, in our view, the lack of distinctiveness of the mark on the allegedly infringing use date would be a very strong defence against the potential compensation claims of the registrant. Likewise, the claim that “Black Friday” has become generic and is now known as a name of famous sales campaign by the Turkish customers would be a considerable invalidation argument.

Risks explained

These risks apply to use of “Cyber Monday” which refers to the Monday following the US holiday of Thanksgiving as well. It has been registered before the Turkish Patent Office by a local person since 2015 (number 2015/00953) as “CyberMonday” on various goods/services in Nice classes 16, 18, 25 and 35 including retail sale services for clothing. Moreover, the five years’ grace period for compulsory use of this mark has not expired and a non-use defence would not be an option against any infringement claims by this registrant until the expiration date in 2021.

Turkish practitioners are being asked about the potential risks of using “Black Friday” or “Cyber Monday” in Turkey. Retailers are advised to consider the risk of being subject to infringement claims before using them, until some challenge these registrations.

Yasemin Aktas is a partner of OFO VENTURA and a member of MARQUES

Posted by: Blog Administrator @ 02.27
Tags: Black Friday, Cyber Monday,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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