As early as 2018, the German Patent and Trademark Office (DPMA) in Munich decided to delete the controversial word mark “Black Friday” (3020130575741). With the decision of the Federal Court of Justice, in which the previous decision of the Federal Patent Court was confirmed, the final deletion follows.
In its judgment of May 27, 2021 (Az. 1 ZB 21/20), the Federal Court of Justice followed the decision of the Federal Patent Court in full, so that the previous owner of the word mark, Super Union Holdings Limited, has now lost it. The reasons for the judgment of the Federal Court of Justice are not yet available, but the plaintiff, the website operator Black-Friday.de states that, in the opinion of the court, the trademark was not used for any of the goods and services challenged in the lawsuit. According to the Trademark Act (Section 49, Paragraph 1 of the Trademark Act), trademark owners are obliged to seriously use a word mark within five years of registration, otherwise it will expire and should be deleted. In addition to their own use, right holders must also take action against trademark infringements by other market participants in order not to lose the trademark protection – only the latter was probably sufficiently implemented in the opinion of the court.
Black Friday established as a bargain day in the trade
Since its registration, the word mark “Black Friday” has repeatedly caused legal uncertainty and litigation in Germany, as it has also been used in Germany in retail and in advertising due to the rapidly growing online business in recent years after its initial use in the USA established, on the other hand, the term has been protected as a word mark in Germany since 2013, so that it may not be freely used by retailers.
Deletion was requested in 2016
Already in 2016 the deletion of the trademark was requested by the Black-Friday.de portal due to absolute obstacles to protection, after it was warned by Super Union Holdings Limited became. 14 other parties also requested the deletion of the word mark. The decision of the German Patent and Trademark Office (DPMA) to delete it in 2018 was followed by a hearing before the Federal Patent Court in 2019 after the trademark owner had lodged an appeal against the deletion. The judgment of the Federal Patent Court issued in 2020 has now been confirmed in the last instance by the Federal Court of Justice, so that the deletion is legally binding.