The Black Friday trademark was declared revoked in Germany. Plaintiff Gall was successful with a forfeiture action against the Black Friday trademark at the Berlin Regional Court. This is good news for retailers who use Black Friday as a discount promotion in Germany.
The trademark dispute over the word mark “Black Friday” has been a matter for the German courts for several years. In Germany, this term “Black Friday” has been protected as a word mark since December 2013; the trademark owner is Super Union Holdings Ltd. (Hong Kong).
In 2016, Super Union Holdings triggered a wave of cease-and-desist letters by sending out cease-and-desist letters on a large scale – quite directly after the sales campaign. According to Super Union Holdings, the trademark is also licensed by Black Friday GmbH, based in Munich, which operates the domain blackfridaysale. de.
Legal resistance against the word mark Black-Friday
But for some years now, there has been legal resistance to this trademark registration. The operator of the website “Black-Friday.de”, Mr. Simon Gall and his “Gall Performance Marketing” are engaged in a highly regarded legal dispute against the trademark registration Black Friday.
First, plaintiff Gall filed an application for cancellation of the trademark Black-Friday, arguing that this word mark lacked distinctiveness (action under § 55 MarkenG). Although the German Patent and Trademark Office (DPMA) agreed in 2018 and declared the cancellation of the trade mark Black-Friday, the Federal Patent Court (BPatG) largely reversed this decision in September 2019 – as we reported. This decision mainly resulted from the fact that distinctiveness only has to be present at the time of the application for a trademark, in the case the year 2013. At that time, Black Friday was by far not as well known in Germany as it is today.
According to the parties, these cancellation proceedings against the Black Friday trade mark have not yet been concluded.
Action for revocation filed after BPatG decision
However, directly after the hearing before the BPatG, plaintiff Gall filed another action against the contested trade mark Black Friday, this time an action for revocation (§ 49 (1) Trade Mark Act). In the revocation action, the protected word mark “Black Friday” was attacked with regard to over 900 goods and services – in short, for all goods and services claimed by the contested mark.
Plaintiff Gall claimed that the trademark had never been seriously used on the German market for these goods and services, so that the trademark must be declared revoked in this respect.
Action for revocation of Black-Friday TM successful
And the Berlin Regional Court (LG Berlin) upheld this action, declaring the word mark Black-Friday revoked in its judgment (March 2021, 52 O 320/19) with regard to all remaining goods and services. Plaintiff Simon Gall had rightly argued that mere registrability says nothing about the subsequent use of a trademark. Just because a trademark exists, not every use of the protected term is a trademark use.
And even a registered trademark can act exclusively as a descriptive indication, which, however, excludes use as a trade mark, explained the Berlin Regional Court. According to the court, the sign “Black Friday” was used by Black Friday GmbH and its licensees, but not as a trademark. This is because the word mark Black-Friday was used as a reference to a discount campaign, and as such as a descriptive indication.
Use preserving the rights within the meaning of § 26 (1) MarkenG requires that the trademark has been put to genuine use in Germany for the goods and services for which it is registered, the court explained. The burden of proof for the actual conditions of use of the disputed mark in the context of an action for revocation (under § 26, 49(1) sentence 1 MarkenG, § 55 MarkenG) has to be borne by the trademark proprietor, i.e. the defendant Super Union Holdings Ltd. This has been the case since the BGH’s “Stella” judgment of January 2021 and the resulting revision of the previous German case law on the burden of proof.
The defendant Super Union Holdings argued that the use of the trademark already resulted from the fact that it granted sub-licences authorising the use of the trademark (to Black Friday GmbH, www.blackfridaysale. de). However, in vain; even if one assumes in the defendant’s favour that it had given unrestricted consent to use of the trademark by Black Friday GmbH, according to the Berlin Regional Court the defendant had not been able to prove that the trademark Black-Friday had been used for the goods and services for which it was registered.
According to the defendant’s general terms and conditions (which were apparently only used as a basis for those contracts that also included advertising on Black Friday GmbH’s internet portal (the website blackfridaysale. de), the licensee is only permitted to use the trademark to designate services, namely to organise a discount campaign around Black-Friday. However, this term was known to the relevant public precisely in the meaning of a discount campaign in 2016, the Federal Patent Court had also found this to be the case. It was therefore ruled out that Black Friday could still be regarded as a trademark designation of goods from then on.
The action seeking a declaration of the time of revocation was therefore admissible and well-founded, the LG Berlin ruled, for the period after 24 April 2019. This had been limited to this period by the plaintiff Gall, in accordance with § 49 MarkenG.
What does this Black Friday ruling mean for retailers in GER?
With the ruling of the Berlin Regional Court, the Black Friday trademark is considered forfeited in Germany, and has been since 24 April 2019. However, this ruling is not yet legally binding, the defendants can appeal against it and this is also very likely.
Nevertheless, any further warnings against the use of the term Black Friday can be appealed, as both parties are aware of the LG Berlin judgment. If this judgement is also confirmed in the coming instances, any cease-and-desist letters from Super Union Holdings Ltd, Hong Kong could then be deemed unjustified cease-and-desist letters and it would even be possible to make corresponding claims for damages against the Super Union Holding. Please do not hesitate to contact us in individual cases.
The judgement of the Berlin Regional Court is in any case a great success for the plaintiff Gall and also for all traders in Germany. For the first time, a court has confirmed that the word mark Black Friday was never actually used as a trademark.
Are you also being warned? We are always at your side!
Have you received a warning, for example from Super Union Holdings Ltd. (or their law firm)? Then let’s talk on the phone and discuss how best to proceed.
Due to the high amount in dispute in proceedings that are now pending, you should act immediately. We will be happy to advise you.
Judgement of Landgericht Berlin (52 O 320/19)