The word mark “Black Friday” must be deleted from the register of the German Patent and Trade Mark Office. This was decided by the Federal Court of Justice in the last instance, as reported by plaintiff Simon Gall, who operates the website “blackfriday.de”. Previously, the Kammergericht Berlin (KG) had already ordered the deletion due to an invalidity of the trademark .According to Gall the KG did not allow an appeal. The trademark owner – Super Union Holdings Ltd., headquartered in Hong Kong – unsuccessfully appealed against this decision (source: https://www.blackfriday.de/endlich-rechtskraeftig-marke-black-friday-muss-vollstaendig-geloescht-werden).
By decision of June 29, 2023, the Federal Court of Justice (BGH) dismissed the appeal against the non-admission of the trademark owner’s appeal. As a result, the cancellation of the KG is final and the disputed trademark “Black Friday” must finally be deleted from the register of the German Patent and Trademark Office.
Since 2016, the trademark owner has taken action against companies that have used the term “Black Friday” in their advertising. In most cases, payment of license fees was demanded. With the current decision of the BGH, any legal basis for this has now ceased to exist.
The BGH had already ruled in 2021 that the word mark “Black Friday” had to be cancelled for the main services in the area of “advertising”. The current decision of the BGH now means the cancellation of the entire trademark for all goods and services still registered, according to Gall. Companies would therefore now have nothing to fear if they use the term “Black Friday” to advertise discount promotions.
It happens again and again that attempts are made to monopolize more or less common advertising terms in order to then take action against allegedly unauthorized users. If you find yourself in such a situation, we will be happy to help you. MSP has a lot of experience and an outstanding reputation in the field of two-sided proceedings. We will be happy to analyze the situation together with you and offer you concrete solution options.