According to press reports, Berlin Regional Court (Landgericht Berlin) has declared the German word mark "Black Friday" to be revoked for more than 900 goods and services in a judgment handed down on 15 April 2021 (case no. 52 O 320/19). The judgment has not been published yet, and has apparently meanwhile been contested.

I. Background

The word mark "Black Friday" was registered in Germany for a large number of goods and services in 2013 (we reported on the topic here: Black Friday is a trade mark! - Noerr (in German only)) and has repeatedly made the headlines since then. After the trade mark owner took action against retailers and portals for allegedly infringing its trade mark by using the term "Black Friday", a large number of applications for cancellation were filed attacking the word mark.

In 2019, the Federal Patent Court (Bundespatentgericht) (case no. 30 W (pat) 26/18) found that the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt) was only correct in ordering the trade mark to be cancelled for part of the registered services. The court said it was already foreseeable at the time of application that the term "Black Friday" would become established as a slogan for a discount campaign, however only in the fields of advertising services and retail services involving electrical and electronic goods. It reasoned that the sign was therefore subject to a requirement to keep it available for use for that part. The appeal against this decision is currently still pending before the Federal Court of Justice (Bundesgerichtshof).

II. Decision

Berlin Regional Court has now declared the "Black Friday" word mark to be revoked with regard to the other goods and services. The court bases its decision on the argument that the sign had been used to advertise discount campaigns but that this was only a descriptive use, and not use as a trade mark. But in the court's opinion, purely descriptive uses do not constitute genuine use as a trade mark upholding the owner's legal rights. The court has also rejected the claim that using the sign "Black Friday" in combination with the ® symbol protected the legal rights, as from the point of view of the public the sign "Black Friday" was used in the sense of a discount campaign. It says that it could not be assumed that the targeted public would have understood the advertising differently because of the ® symbol.

III. Upshot

The provision on revocation in section 49 German Trade Mark Act (Markengesetz - MarkenG) is of special importance especially for trade marks registered for a large number of goods and services from different fields. It states that the registration of a trade mark is revoked and cancelled upon request if the trade mark has not been used for an uninterrupted period of five years in such a way as to preserve the rights of the proprietor. Since the trade mark can also be cancelled just for a part of the registered goods or services, as a rule its owner has to use the trade mark in its entirety if it wants to prevent a loss or partial loss of trade mark protection.

The last word has yet to be spoken for the "Black Friday" trade mark. It remains to be seen how the Federal Court of Justice will view the question of distinctiveness or the need to keep the term available for use. It also remains to be seen whether Berlin Court of Appeal (Kammergericht) will accept the Berlin Regional Court's holding that the trade mark was not used in a way that preserved the proprietor's rights. Until then, the "Black Friday" trade mark will remain in the register and the German courts will essentially be bound by its registration.

Originally published 21, May 2021

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