News on the BLACK FRIDAY trademark
Trademark protection for the term BLACK FRIDAY in Germany has been an ongoing issue for years. Now there is a new ruling. Last Friday (14 October 2022), the Berlin Court declared the trademark "Black Friday" to be revoked with effect from 25 April 2019.
Can all companies now advertise with the term BLACK FRIDAY?
Previous decisions on the BLACK FRIDAY trademark
While the now well-known sales day BLACK FRIDAY was not yet widely known in Germany, In 2013, a Hong Kong holding company registered the term BLACK FRIDAY as a trademark in Germany. With this trademark registration, the holding company claimed a variety of services, especially for trade services in Nice classes 9, 35, and 41.
First, this trademark registration received little attention, but it attracted public attention in 2016, namely when the trademark owner from Hong Kong triggered a wave of warning letters and invoked its trademark protection with masses of warning letters sent out.
Legal action against the BLACK FRIDAY trademark registration
The operators of the website www.black-friday.de in particular defended themselves against this business model. This website offers special deals and an overview of discount campaigns. The operators of this website took legal action against the trademark registration BLACK FRIDAY of the Hong Kong holding company.
Indeed, they were quite successful. Thus, the Federal Patent Court ruled in September 2019 (BPatG, 30 W (pat) 26/18) that the word mark BLACK FRIDAY must be canceled for the essential services of the field of "advertising". And in 2020, the Federal Supreme Court (Bundesgerichtshof, BGH) confirmed the cancellation of the trademark BLACK FRIDAY primarily for trade services related to advertising and marketing (BGH, I ZB 21/20).
Term BLACK FRIDAY: need to keep it available?
The BGH also commented on a possible need to keep the term BLACK FRIDAY available, which has become part of everyday language.
However, at the time of the trademark application in 2013, the term had not yet had any descriptive meaning in Germany, the BGH explained. Nevertheless, a need to keep the mark free could exist even if the sign could have a descriptive meaning at any time in the future. The BGH considered this for the term BLACK FRIDAY, at least in the advertising sector. It was for this sector that the BGH decided to cancel the BLACK FRIDAY trademark.
Complete cancellation of the BLACK FRIDAY trademark
However, this ruling still did not mean a complete cancellation of the BLACK FRIDAY trademark. Therefore, the operators of the website black-friday.de took further action against the goods and services that had not yet been canceled. The plaintiffs argued that the term BLACK FRIDAY was not used as a trademark by the trademark owners.
This argument was successful. A trademark can only be protected if it is actively used commercially. 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 the non-use of the trademark.
News on the revocation of the trademark BLACK FRIDAY
The trademark owners appealed against this decision and it was decided last Friday. The appeal is rejected by the Berlin Court (Kammergericht Berlin) and the revocation of the trademark "Black Friday" is declared for more than 900 goods and services, report the operators of the website www.black-friday.de.
An appeal has not been allowed. The trademark owner could now only file a non-admission appeal with the BGH. If he does not do so, the complete revocation of the trademark is legally binding.
So, can all traders advertise in Germany with the term BLACK FRIDAY this November?
There is still the final legal uncertainty as to whether this case will be heard again by the Federal Supreme Court. This is because if the trademark proprietor files a non-admission appeal and if this is then granted, this case would be continued as appeal proceedings before the Federal Supreme Court. Until a decision is reached on the non-admission appeal, the complete revocation of the BLACK FRIDAY trademark is therefore not legally binding.
Even now, however, the trademark owner has no certainty that it will be able to legally issue warnings again. This is because the decision on the revocation of the BLACK FRIDAY trademark is the current state of the law.
Do you have any questions about trademark protection, a trademark application, or trademark defense?
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