Good news: The long-standing annoyance of the registered word mark “Black Friday”, especially for online retailers, is over. The Berlin Court of Appeal declared the trademark to have expired in autumn 2022 and did not allow the appeal. A complaint against the non-admission of the appeal has now been rejected by the Federal Court of Justice.
Why is?
For years there has been trouble about the use of the term “Black Friday”, which retailers in particular like to use for corresponding sales campaigns on “Black Friday” in November.
The term “Black Friday” had already been protected as a word mark in Germany since 2013. This is even very comprehensive, since more than 900 goods and services were covered by the trademark.
After changes, the last owner of the brand was a company based in Hong Kong, which had transferred the right to use the brand to a GmbH based in Vienna.
The attempt to monopolize the established term “Black Friday” by registering a trademark was met with dismay on the market. Despite the registered trademark, many retailers and portals still use the term “Black Friday” to advertise their special sales in November. This was also hardly avoidable, as many consumers are now looking forward to a “Black Friday sale” at their preferred retailer. Occasionally, alternative names such as “Black Sale” were used.
Starting in 2016, entrepreneurs who advertised with “Black Friday” began to be warned. From now on, anyone who advertised with the term was exposed to a real danger of being warned.
Procedure for removing the brand
Various warnings and third parties took action against the existence of the trademark and filed cancellation requests.
These were initially only successful in some areas of the brand and the brand remained in force for the remaining 900 goods and services.
Recently, action was taken against the brand as a whole with the argument of non-use. The request was successful. According to the LG Berlin (judgment of April 15, 2021, Az.: 52 O 320/19), the trademark had expired due to lack of use. There was no right-preserving use, since only descriptive use existed.
In the appeal, the Berlin Court of Appeal agreed with this view and confirmed the complete cancellation of the trademark (judgment of October 14, 2022, Az.: 5 U 46/21). The KG did not allow the revision.
As the last straw, the trademark owner now resorted to the instrument of a non-admission complaint to the Federal Court of Justice.
decision of the Supreme Court
With a decision of June 29, 2023 (Az.: I ZR 184/22), the BGH now decided that the non-admission complaint of the trademark owner was to be dismissed because the legal matter is of no fundamental importance, the complaints based on the violation of fundamental procedural rights are not effective and the further development of the law or the safeguarding of uniform case law does not require a decision by the Court of Appeal.
The bizarre concept of the word mark “Black Friday” is now over and the final curtain has fallen. The trademark must be completely deleted from the register of the German Patent and Trademark Office.
Conclusion
This is an extremely pleasing decision for German (online) trade!
This November, retailers will again be able to advertise “Black Friday” with almost no worries, which should bring great relief. The term “Black Friday” has been established for years for discount sales before Christmas and is also expected by customers to be a must-attend event for the respective retailer.
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