Black Friday” is not only eagerly awaited by many consumers, it has now also been the subject of a dispute in trade mark law. The term “Black Friday” originally comes from the USA, where many online retailers have been offering special discounts on their goods every fourth Friday in November for a long time.
In a decision (judgement of 14.10.2022, ref. 5 U 46/21), the Berlin Court of Appeal confirmed the revocation of the trademark “Black Friday”. What happened? The trade mark “Black Friday” has been registered at the German Patent and Trade Mark Office since 2013 for more than 900 goods and services. The owner of the trade mark is Super Union Holdings Ltd, based in Hong Kong.
What had to follow was that numerous traders were warned about the use of the term. There was a great deal of resistance to this. Some traders applied for cancellation of the trade mark and were successful before the German Patent and Trade Mark Office. Super Union Holdings again defended itself with legal action, but failed. The Berlin Court of Appeal ruled that the trade mark had lapsed due to lack of use.
A trade mark proprietor must prove the use of a trade mark after the expiry of five years after registration if cancellation is requested. This use must be such that the trade mark can be associated with the registered goods and services of a specific company. However, Super Union Holdings did not succeed in this in the court proceedings. According to the court, the term “Black Friday” is only perceived by consumers as a catchword for a discount campaign and not as the trade mark of a specific company.
