Dimo Gospodinov is a senior partner in Gospodinov&Genchev Law firm. Serious expertise in Commercial, IP and Privacy cases, providing civil and administrative litigation services with a very high rate of success. Fellow of Information Privacy (FIP) at IAPP, Certified International Privacy Professional (CIPP/E) and Certified International Privacy Manager (CIPM).
One of, if not the most popular event is approaching. This Friday. Or The Black Friday. But aside the question how much we need on stock, there’s one more concern for merchants – can they actually call their campaigns a Black Friday. And there’s a good reason for this concern.
The media shed a light at this problem in 2016, when Dante International CA, the owner of the e-commerce platform eMAG, registered two trademarks with the names Black Friday – one in English and one in Bulgarian wording. Given this situation, our clients constantly ask us whether they can include these terms in their advertising campaigns. Numerous questions were raised about the distinctiveness and registrability of Black Friday, as well as the importance of its use in trade campaigns on the Bulgarian market. The question “Can names like Black Friday and other similar words be used as promotions of discounts and sales?” is still relevant in the digital marketing area.
Current status and registrability of the term Black Friday
The good news is that as of 14.03.2018. the two brands in question have been erased from Bulgarian Patent Office (BPO) and eMAG no longer holds the rights to the term Black Friday- both in English and Bulgarian. The registration of the trademarks in 2016 may have been in accordance with the law but as of now, the two terms are not registrable because they meet the absolute prerequisites for refusal of registration in the Trademarks and Geographical Indications Act (TGIA).
Over the last few years, these terms have hit the Bulgarian market and it is now customary for almost all merchants to make shopping campaigns during the last Friday of November. Black Friday is now associated with discounts and sales by Bulgarian consumers as much as other similar but present for a longer time shopping campaigns such as:
- Christmas market
- New Year’s bazaar
- March discount
- Spring sale
- Easter promotion
The common use of an expression in society, both between consumers and established business practices, is one of the absolute grounds for refusing registration. This rule guarantees the distinctiveness of each trademark. The trademarks in question were registered in the Bulgarian Patent Office (BPO) on 26.01.2016 for Class 35: Advertising; business management; business administration; office functions. The aforesaid class includes mainly services facilitating the management of business transactions, as well as services provided by advertising agencies. Anyway, at the moment, both trademarks have been erased and we can hardly imagine that they will be registered again.
Why was the application for their registration accepted in the first place?
The short answer is that most likely the BPO has decided that at the time of registration, the terms were not commonly used in commercial turnover. Such an assessment of usability can be made based on user behavior. From November 2013 Black Friday and other related phrases were only just getting started to be used on Google’s search engine by Bulgarian users. The frequency, low at first, increased over time. The number of searches went up significantly in 2016. This would be explained by the increasingly frequent practice of making discounts and sales by various businesses under the name Black Friday. The data shows an increase in the use of Black Friday after its registration as a trademark. Until the spike in popularity after 2016 it should not be assumed that the word was popular in Bulgaria’s society market so that it could be associated with commercial and advertising activities. Until 24.11.2014, when the application for registration of the Black Friday trademarks was filed, these expressions were not yet common in the spoken language or in the established commercial practice for the respective service on the Bulgarian market. In this period the word combination should not have been in violation of Art. 11, para. 1, item 3 of the TGIA. The contradiction with the law’s absolute grounds of refusal can only be considered present after 2016.
The registrability of trademarks should be assessed on the fact if they indicate the manner in which services are provided. This is another absolute prerequisite for refusing registration – Art. 11, para. 1, item 4 of the TGIA. In this case, the eMAG trademarks are registered in connection with advertising and business management. The very term Black Friday is associated with the offering of discounted products, but its popularity in Bulgaria has only grown since 2016. Until then it could hardly be considered that the average Bulgarian consumer associates Black Friday with discounts and sales. From this it can be concluded that the registration of Black Friday until 2016 does not violate the prohibition of Art. 11, para. 1, item 4 of the TGIA. A similar conclusion, though concerning goods rather than services, was made in the Supreme Administrative Court of Bulgaria’s ruling – No. 15009 of 27.11.2012. The Supreme Judges ruled that neither the quality nor the characteristics of Class 2 goods are indicated by the trademark Dazzling White, since the semantic combination does not indicate physical perception but rather inspires a secondary, fantasy image. The phrase Black Friday could be seen as an associative brand. According to the said decision, these types of marks direct consumers to the goods and services without specifying them literally, since they are not the usual specific instructions for those goods and services.
Current use of the terms Black Friday in advertising
Since 2016 the expressions Black Friday have already become commonly associated with discounts and sales, they now do not meet the Bulgarian legislation’s criteria for registrability. But even if they were accidentally approved, they can be attacked by any person under Art. 25, para. 1, item 2 of the TGIA. Both hypotheses lead to the same result – erasure preceded by costly and lengthy judicial and administrative procedures.
According to the aforementioned provision, the registration of a mark can be erased at the request of any person. The criteria needed for such request is of the action or omission of the mark’s proprietor resulting in the mark becoming common designation of the goods or services for which it is registered. With the growing popularity of the Black Friday advertising in Bulgaria, the average consumer begins to perceive the term as commonly used on the market and associates it with discounts and sale campaigns. Assuming that eMAG still holds the rights to Black Friday, it can be considered that its actions as a trader in 2016-2018 significantly promotes expression. This can easily be proven by referring to eMAG’s advertising campaigns and its large presence in the e-commerce.
According to Art. 26, para. 4 of the TGIA any person may request the cancellation when the absolute grounds for refusal in Art. 11 of the TGIA are present. In particular, the success of the request will be guaranteed if the violation concerns of Item 3-4 of Art. 11 of the TGIA – Common use of the expression and direct indication of the characteristics of the services.
It can be assumed that the term Black Friday and words related to it are already widely associated with sales campaigns, discounts and other similar commercial practices.
So use it, it’s free
Despite at first legitimate applications for registration until 2016, the two Black Friday trademarks were erased in 2018. Today we can say with certainty that their use in advertising campaigns and promotions no longer constitutes a violation of the Trademarks and Geographical Indications Act, nor does it violate the rights of Dante International CA. However, the owners of eMAG have one combined and one word mark registered under the name “Black Friday by eMAG”. They, in their turn, possess the quality of distinctiveness and do not contradict the absolute grounds for refusal under Art. 11 of the TGIA.
The use of the term Black Friday in Cyrillic is clearly not in conflict with these marks. The English Black Friday, on the other hand, may be used insofar as it does not mislead the customers that the promotions are presented by eMAG. A clear indication of the names of the merchants in the advertising campaigns brings clarity and distinguishes the goods and services they offer. This behavior is encouraged and does not violate both the Bulgarian trademark and competition legislation.