“Black Friday” is now Blackout
In the latest case, the German Federal Supreme Court ruled that the trademark “Black Friday” is canceled for essential services in the field of advertising, making this legally binding. This trademark has been a public issue for years, which now saw a strict cancellation from the Supreme Court. The big discount day like Black Friday was pretty much known in Germany, where we also see Hong Kong holding companies securing trademark protection in Germany for the term Black Friday under Class 9, 35, 41 in 2013. But this holding company warned multiple traders concerning its trademark protection of Black Friday which made the traders aware of the same.
This warning was not accepted by the website www.black-firday.de which was a retailer portal that offers its consumer deals over various discount campaigns around Black Friday. The operators of the portal and the trademark holder, Super Union Holdings from Hong Kong, have been in a legal dispute for years for the trademark “Black Friday”. The operators of the website did not accept any such warning from the holder.
In the Federal Patent Court, the operator of the website did achieve a partial success in 2019 that the mark Black Friday must be canceled for the essential service of the field of advertising.
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The Federal Supreme Court
The Supreme Court affirmed the ruling of the Federal Patent Court where it canceled the Black Friday from the trademark register for the services “marketing”, “organization and implementation of advertising events”, “planning of advertising measures”, “dissemination of advertisements” and “advertising on the internet for third parties” as well as a large number of other services related to advertising.
The court noted that Black Friday was not popular and did not have a descriptive meaning at the time of application when the Hong Kong holder got it registered in 2013, where no such big discount day was popular. The Court did reiterate that the mark must be made free even if the indication of which the mark consists was not descriptive at the time of filing. The Court held that any such use must occur at any time in the future as well. The court ruled that sufficient indication was there that the advertising industry would develop even after filing for the trademark. The court observation concerned itself with the future occurrence. The development of the advertising industry will surely provide various discount campaigns in the future. Also, Black Friday was in trade for electronic goods and the probable occurrence of the same for the discount campaign cannot be ruled out.
While a discount campaign is organized, it not only serves as a sales transaction but also includes its implementation as a campaign day by the trader. The keyword that designates any such discount campaign for certain services cannot be monopolized and protected for these services. For the reason stated above, Black Friday is a catchword for such a discount campaign. Designating such a campaign, Black Friday was descriptive of the services mentioned. For this reason, the Supreme Court holds that Black Friday must be made free for essential services in the field of advertising.
This judgment provides a legal certainty against trademark registration of a mark that can be descriptive of any such essential services. Black Friday is now canceled for any such essential services in the field of advertising and marketing. Nevertheless, this cancellation is not for various other goods and services of which the operators of the website are taking further action to include other goods and services. This was also successful where the Berlin District Court ruled that Black Friday has been canceled for more than 900 goods and services. But this is on appeal.