According to press reports, the Berlin Regional Court (Landgericht Berlin) revoked the German word mark “Black Friday” for more than 900 goods and services in a judgment handed down on April 15, 2021 (case no. 52 O 320/19). The judgment has not yet been published and has apparently been challenged in the meantime.
The word mark “Black Friday” was registered in Germany for a large number of products and services in 2013 (we talked about it here: Black Friday is a mark! – Noerr (in German only)) and made the headlines several times since. After the trademark owner took action against retailers and portals for allegedly infringing his trademark using the term “Black Friday”, a large number of cancellation requests were filed to attack the word mark.
In 2019, the Federal Patent Court (Bundespatentgericht) (case no.30 W (pat) 26/18) found that the German Patent and Trademark Office (Deutsches Patent- und Markenamt) was only right in ordering the cancellation of the mark for part of the registered services. The court said it was already foreseeable at the time of the claim that the term “Black Friday” would prevail as a slogan for a rebates campaign, but only in the areas of advertising and retail services involving retailers. electrical and electronic products. It considered that the sign was therefore subject to the obligation to keep it available for use for that party. The appeal against this decision is currently still pending before the Federal Court of Justice (Bundesgerichtshof).
The Berlin Regional Court has now declared the word mark “Black Friday” revoked with regard to other products and services. The court based its decision on the argument that the sign had been used to advertise discount campaigns but that it was only descriptive use and not use as a trademark . But in the court’s opinion, purely descriptive uses do not constitute genuine use as a trademark preserving the legal rights of the owner. The court also rejected the claim that the use of the sign “Black Friday” in combination with the symbol ® protected legal rights, because from the public perspective, the sign “Black Friday” was used in the sense of ‘a rebate campaign. . He says it couldn’t be assumed that the target audience would have understood the ad differently because of the ® symbol.
The revocation provision of Section 49 of the German Trademark Act (Markengesetz – MarkenG) is of particular importance, in particular for trademarks for a large number of products and services from different fields. It specifies that the registration of a mark is revoked and canceled on request if the mark has not been used for an uninterrupted period of five years in order to preserve the rights of the owner. Since the mark can also be canceled only for a part of the registered goods or services, as a rule, its owner must use the mark in its entirety if he is to avoid loss or partial loss of the protection of the mark.
The last word has yet to be said for the “Black Friday” brand. It remains to be seen how the Federal Court of Justice will view the issue of distinctiveness or the need to keep the term usable. It also remains to be seen whether the Berlin Court of Appeal (Kammergericht) will accept the decision of the Berlin Regional Court that the mark has not been used in a manner which preserves the rights of the owner. Until then, the mark “Black Friday” will remain in the register and the German courts will be essentially bound by its registration.
Originally posted May 21, 2021
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