BLACK FRIDAY trademark cancelled - finally!
No more protection for the Black Friday trademark in Germany! Finally, the cancellation judgement for the Black Friday trade mark is legally binding.
In October 2022, there was an important judgement. On Friday, 14 October 2022, the trade mark "Black Friday" was declared revoked by the Kammergericht Berlin with effect from 25 April 2019. Now, the cancellation judgement of the Berlin Court of Appeal has been legally confirmed by a decision of the Federal Supreme Court of Justice (Bundesgerichtshof, BGH) and the trademark "Black Friday" must be finally cancelled from the register of the German Patent and Trade Mark Office.
Previous decisions on the BLACK FRIDAY trademark
When the now very well-known sales day BLACK FRIDAY was not yet widely known in Germany, a Hong Kong holding company secured trade mark protection in Germany for the term BLACK FRIDAY in 2013.
This attracted great public attention in 2016, when the Hong Kong trademark owner triggered a wave of cease-and-desist letters and invoked its trademark protection by sending out masses of cease-and-desist letters.
This was followed by years of legal action against the BLACK FRIDAY trademark registration, in particular by the operators of the website www.black-friday.de. This is well summarised in our article News on Black Friday.
BLACK FRIDAY trademark in Germany cancelled - finally!
The condition for trademark protection is commercial use. And an essential requirement for a trademark is that it enables consumers and the interested public to recognise the commercial origin of the product or service.
The operators of the website black-friday.de claimed that the term BLACK FRIDAY was not even used as a trademark by the trademark owners.
This argument was successful. The Berlin Regional Court therefore ruled in April 2021 (LG Berlin, 52 O 320/19) that the trademark "Black Friday" is revoked for more than 900 goods and services due to non-use of the trademark.
The appeal of the trade mark owners against this decision was rejected by the Berlin Court of Appeal in October 2022 and the revocation of the trademark "Black Friday" was declared for more than 900 goods and services.
An appeal was not allowed, but the trade mark owner could still file a non-admission appeal with the BGH. However, this has now been decided.
By decision of 29 June 2023, the Federal Supreme Court dismissed the appeal against the non-admission of the trade mark proprietor's appeal. The cancellation of the Black Friday trademark is legally binding.
So can all retailers advertise with the term BLACK FRIDAY this November? Yes!
Identical registered trademarks
What to do in case of identical registered trademarks in the German, European and international trademark register?
If you have any questions concerning trademark protection or defence, please contact us by phone at +49 69 69 59 60-0 or info@kollner.eu, the first call is free of charge.
