A Trade Mark Law Perspective of "Black Friday"

“Black Friday “may be defined in two ways. First, it is day that marked stock market catastrophe. Originally, 24th September, 1869 was deemed “Black Friday” when a crash was caused by gold speculators who attempted to corner the gold market. Their attempt did not materialize as the gold market collapsed causing the stock market to plummet. Second, it is the day following Thanksgiving in the United States (US). Thanksgiving is celebrated and honoured as a national holiday in the US and Canada as well. However, other countries and religions also mark Thanksgiving days. “Black Friday” is often regarded as the start of the Christmas Season and major retailers offer very attractive promotional sales.
Of great interest to Trademark Law and practice, is the fact that the concept of “Black Friday” has transcended the US and Canadian jurisdiction to Europe and even Africa. It is interesting to note that according to the United States Patents and Trademark Office (USPTO) Trademark database, there are at least thirty (live or dead) Trademarks with the words “Black Friday” either registered as they appear or incorporating other words. Majority are registered under class 35 of the Nice Classification system particularly for advertising services.

In South Africa, the popular online store ZANDO has a “Black Friday Week” whereby there have offered significant discount on selected products. In Kenya, the online shopping store JUMIA equally extended its “Black Friday” craze to 30th November, 2015 in a bid to ensure Kenya’s enjoyed the massive discounts.
Whereas the concept of “Black Friday” is still foreign in Kenya, it may be safely assumed that in a few years, it will catch and retailers and companies will take advantage of this fad to offer massive discounts to shoppers. It will be a marketing hot bed geared towards exciting shoppers during the festive season which is informally ‘the spending season’.
It is clear that there are serious legal implications for the unauthorized use of registered trademarks. As such, it is not a far-fetched notion to be in awe over the legal implications (if any) of the use of the words “Black Friday” by platforms such as ZANDO and JUMIA, assuming that there is no consent for such use. Firstly for the obvious reason that the origin of the words is foreign and importantly, the mark “Black Friday” as they are or combined with other words are registered Trademarks in the US. Appreciating and noting the fact that IP is territorial in nature, online platforms are unique due to the fact that they may be accessed anywhere in the world, including in the US where the words have been trademark protected.
Considering the cross border use of this registered trademark(s) today, it is safe to conclude that the words “Black Friday” have become generic especially in class 35 and hence may not be appropriated exclusively to a single proprietor. It appears that they have become descriptive of a marketing strategy consequently, free for all to use.
For instance, in Kenya, if a proprietor sought to register the words “Black Friday” in class 35, there is a huge chance that the Registrar of Trademarks will require the two words be disclaimed separately and apart from the mark as a whole. Rightly so because such words are everyday words so to speak and may not to be monopolized. Such disclaimer will thus leave the proprietor with a weak Trademark.
It is opined that it ought to be a consideration for companies when adopting foreign concepts to consider the underlying historical background from where such concepts originate and importantly if such concepts enjoy IP protection. The words “Black Friday” obviously make more sense in North America than they do in Africa. But as the world continues to be less limited by boundaries, “Black Friday” discounts by local online and brick & mortar stores are more than welcomed.

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