Federal Supreme Court can delete Black Friday trademark – but not in all cases
A Chinese company’s patent for the term Black Friday for advertising purposes is permanently deleted from the trademark register. However, there is still confusion.
The term “Black Friday” has been a thorn in the side of many market participants for years. The problem: The Hong Kong company Super Union Holding had the word mark protected in 2013 for advertising. Since 2016 she has cheerfully warned retailers who used the term for shopping events. Others tried to evade the brand owner’s request by all sorts of creative paraphrases. As a result, a total of 15 companies applied for the word mark to be deleted, including the operator of blackfriday.de, Paypal, Puma, Tom Tailor and other chains. The Federal Patent Office decided in the casethat the market activity of blackfriday.de, which started before registration, justifies a need to keep it free. As a result, she ordered the deletion of the entry. Super Union lodged a complaint and so the case reached the highest civil law instance: the Federal Court of Justice (BGH). The recently confirmed the decision. However, the verdict has pitfalls.
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Both sides see themselves as winners
Simon Gall, who founded blackfriday.de in 2012 and still operates it today, is happy about the decision. The Super Union had warned him and dealers associated with him because of alleged trademark violations. Now the patent office is deleting “Black Friday” for the services “Marketing”, “Organization and implementation of advertising events”, “Dissemination of advertisements” and “Internet advertising for third parties”. That should make many of the warning cases obsolete. On the other side, however, the verdict is also celebrated.
Blackfriday.de versus Blackfridaysale.de
The Austrian Black Friday GmbH owns the exclusive rights to use the term Super Holding. She writes in her press release, according to the judgment, the trademark remains “on all goods registered for it and a large part of the registered services and must be observed”. Since the company is the only one allowed to issue sub-licenses, its customers are on the legally safe side. Like Simon Gall, the GmbH operates an Internet portal to bundle relevant offers. It has been online since 2013 under the domain blackfirdaysale.de.
Brand area is to be further restricted
Both statements are true: The Super Union retains the trademark rights for many goods and services with the designation “Black Friday”. In the last instance, the BGH only confirmed the removal in the area of ​​marketing / advertising. Simon Gall said Golem.de about it: “Actually, the rest of the goods and services are not really important. Only the advertising services were problematic. Nobody wants to sell “Black Friday shoes” or “Black Friday fire extinguishers”, but shoes from other brands on the occasion of Black Friday. “
Protecting brands is not enough – you have to use them
However, the deletion is not enough for him, he goes on because “many traders are not aware of this difference.” Before the Berlin Regional Court, he recorded an initial success: the judges declared the Black Friday brand for 900 goods and services for expired. The reason: none of the attacked goods and services were used to preserve the law. The background is in Section 49 (1) of the Trademark Act (MarkenG). According to this, a trademark will be declared as fallen upon application and canceled if it has not been used within five years. The Super Union has therefore not marketed any Black Friday shoes or Black Friday gummy bears in recent years, for example. The Berlin Higher Regional Court is currently examining the decision in the appeal process.
