BGH: Trademark "Black Friday" is cancelled in area advertising

News on the “Black Friday” trademark in Germany: the “Black Friday” trademark is cancelled for essential services in the field of advertising – now also legally binding through a ruling by the German Federal Supreme Court BGH:

The “Black Friday” trademark has been a public issue in Germany for years. Even before the trend towards a big discount day like Black Friday was generally known in Germany, a Hong Kong holding company secured trademark protection in Germany for the term “Black Friday” in 2013 – for numerous trade services in Nice classes 9, 35 and 41. However, many traders only became aware of this when the holding company triggered a wave of warnings in 2016 with reference to the trademark protection for “Black Friday”.

The German operators of the website www.black-friday.de in particular did not want to accept this. The website Black-Friday.de is a retailer portal that offers its customers special deals and an overview of the discount campaigns around Black Friday. For years, the operators of this portal have been involved in a legal dispute against the trademark “Black Friday” and against the trademark owners Super Union Holdings from Hong Kong.

The operators of the Black-Friday.de portal achieved an important partial success before the Federal Patent Court – we reported. The Federal Patent Court ruled in September 2019 (BPatG, 30 W (pat) 26/18, published in March 2020) that the word mark “Black Friday” must be cancelled for the essential services of the field “advertising”.

BGH confirms decision of the BPatG

This decision has now been fully confirmed by the Federal Supreme Court (BGH, I ZB 21/20). The trademark “Black Friday” is cancelled from the trade mark register for the services “marketing”, “organisation and implementation of advertising events”, “planning of advertising measures”, “dissemination of advertisements” and “advertising on the internet for third parties” as well as a large number of other services related to advertising.

It is true that the term “Black Friday” did not yet have a descriptive meaning at the time of the application for the trade mark in October 2013, the court explained. At that time, the big discount day was not nearly as popular as it is today.

But a need to keep the mark free also exists, the BGH emphasised, if the signs and indications of which the mark consists had not yet been used in a descriptive way at the time of filing, but such use could occur at any time in the future. And that was the case in the present case, the court ruled, also for the field of advertising services. There had been sufficient indications that an advertising industry would develop after the filing date, which would bundle and disseminate certain discount campaigns. Moreover, according to the court, there were indications that “Black Friday” in the trade with electrical and electronic goods would establish itself as a catchword for a discount campaign in Germany.

According to the BGH, organising a discount campaign is not limited to the sales transaction itself, but also includes the implementation of a campaign day by a trader. The BGH ruled that a designation that designates a discount campaign for certain services in a keyword-like manner cannot be protected as a trademark for these services. “Black Friday” stood as a catchword for a discount campaign and thus described a characteristic of the retail services mentioned. Therefore, “Black Friday” for essential services in the field of advertising is subject to a need to keep free and to the obstacle to protection under § 8 (2) no. 2 MarkenG.

What happens next?

This judgement still does not mean a complete cancellation of the “Black Friday” trademark, but it is an important milestone against trade mark registration and also provides legal certainty from now on. The trademark “Black Friday” is now cancelled and without any claim to protection for essential services in the field of advertising and marketing.

However, the trademark “Black Friday” is not cancelled for many other goods and services. In further proceedings, the operators of the website www.black-friday.de are therefore taking action against the goods and services that were not covered by the decision of the Federal Patent Court. In the first instance, this was also successful: in a judgment of 15 April 2021 (LG Berlin, 52 O 320/19), the Berlin District Court declared the trademark “Black Friday” forfeited for more than 900 goods and services – due to non-use of the trademark. However, this judgement is currently on appeal.

Conclusion

Anyone who still receives warnings from the Black Friday trademark owner can now successfully challenge them in many cases. Probably, an unjustified warning can even file a claim for damages on his part. Please contact us in your individual case. Due to the high amount in dispute, you should definitely act. We will be happy to advise you.