For advertising purposes, the BGH removed the trademark protection for the term “Black Friday”. That doesn’t go far enough for the portal owner of blackfriday.de. (Photo: wavebreakmedia / Shutterstock)
The term “Black Friday” has been a thorn in the side of many market participants for years. The problem: The company Super Union Holding from Hong Kong had the word mark protected for advertising in 2013. Since 2016 she has cheerfully warned retailers who used the term for shopping events. Others tried to avoid 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 case that the market activity of blackfriday.de, which had already started before the registration, justified 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 judgment has pitfalls.
Both sides see themselves as winners
Simon Gall, who founded blackfriday.de in 2012 and still operates it today, is delighted with 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, they also celebrate the judgment.
Blackfriday.de versus Blackfridaysale.de
The Austrian Black Friday GmbH owns the exclusive rights of use of the term Super Holding. In her press release, she writes that after 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 should 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 told Golem.de: “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 a trademark is not enough – you have to use it
But the deletion is not enough for him, he goes on because “many retailers 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 to expire. 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.
