To the point: The Federal Patent Court has decided that the word mark "Black Friday" only has to be cancelled for individual services in the field of advertising and trade in electrical and electronic goods. Apart from that, the Court set aside the complete cancellation of the word mark by the German Patent and Trade Mark Office.
It is not without reason that Black Friday is one of the days with the strongest sales in the year. On the day after Thanksgiving, many retailers and online shops attract customers with extreme discount campaigns and generate billions in sales. Since 2013, a Hong Kong company, Super Union Holdings Ltd., has enjoyed protection for the word mark "Black Friday" for a variety of goods and services.
After various companies urged the German Patent and Trade Mark Office (DPMA) to cancel the registration of the word mark, the DPMA granted the corresponding cancellation requests in 2018 and ordered the complete cancellation of the trade mark. In the view of the DPMA, both at the time of filing the application and at the time of the decision, an absolute ground for refusal of registration existed for the challenged trade mark for lack of distinctiveness. Further background information on the trade mark dispute associated with Black Friday can be found in our blog post of 29 October 2019 (german version only). The trade mark proprietor filed an appeal against the decision of the DPMA.
The 30th Board of the Federal Patent Court now held that although the complete cancellation of the trade mark by the German Patent and Trademark Office should be set aside, the cancellation should be confirmed for individual advertising services and the trade with electrical and electronic goods.[HD1] The Federal Patent Court essentially followed the trade mark proprietor's argument that the name 'Black Friday' was known to the average consumer in Germany at the time of the trade mark application as the day of the 1929 stock market crash, but not in connection with discount campaigns. The Federal Patent Court dealt in detail with the documents submitted by the applicants, but concluded that an overall assessment of the documents submitted in the proceedings did not lead to the assumption of a general understanding in the market in the sense that the average domestic consumer had already understood the term ‘Black Friday’ as a catchword for a discount campaign at the time of filing (2013).
However, the Court came to a different conclusion in the field of the trade in electrical and electronic goods and certain advertising services in Class 35. The Federal Patent Court based its decision in particular on the fact that there had been various campaigns on the German market before the trade mark application was filed. In these fields it was therefore reasonable to expect, from the perspective of the date of filing, that the term 'Black Friday' could become established in the sense of a discount campaign. For this reason, the Court ruled in favour of a future general interest in ensuring the availability of the term not being restricted for other traders offering their goods or services [Freihaltebedürfnis], as provided for in Section 8 (2) no. 2 of the German Trade Mark Act, which already existed at the time of application, and ordered the cancellation of the trade mark for these services.
The Federal Patent Court permitted the appeal on a point of law against this decision.
It now remains to be seen whether the parties will lodge an appeal with the German Federal Court of Justice. Independently of this, the topic is also being pursued in other cases. In the principal proceedings, the Dusseldorf Regional Court is hearing the case concerning the trademark proprietor's cease and desist letter to the Black-Friday.de web portal. In addition, an action for cancellation of the trade mark for non-use was brought before the Berlin Regional Court. Until the dispute is finally resolved, traders are advised not to use the term for the relevant goods and services without a licence. It must be assumed that the trade mark proprietor will continue to defend the word mark in the future. We will inform you about the progress of the dispute here in due course.