Germany’s Federal Court of Justice confirms partial cancellation of German word mark “Black Friday”

In its ruling of 27 May 2021 (case I ZB 21/20), Germany’s Federal Court of Justice (Bundesgerichtshof) upheld a decision of the Federal Patent Court (Bundespatentgericht) that the German word mark “Black Friday” must be cancelled for some of the registered services.

I. Background

The term “Black Friday” was registered in Germany in 2013 as a word mark for numerous goods and services and has since been the subject of several legal disputes. Most recently, Berlin Regional Court (Landgericht) declared the trademark revoked for more than 900 goods and services (as we reported here) by judgment of 15 April 2021 (case 52 O 320/19); however, the trademark proprietor has challenged that judgment and so the decision is not final.

Previously, the trademark “Black Friday” was challenged by several requests for cancellation before the German Patent and Trademark Office (Deutsches Patent- und Markenamt). After the German Patent and Trademark Office ordered the complete cancellation of the trademark registration, the Federal Patent Court ruled in 2019 (case 30 W (pat) 26/18) that this order was correct only for some of the registered services. The appeal brought by the trademark proprietor against this decision by the Federal Patent Court is the subject of the ruling by the Federal Court of Justice which has now been issued.

II. Decision

The Federal Court of Justice has dismissed the trademark proprietor’s appeal and, like the Federal Patent Court, acknowledges an obstacle to protection under section 8 (2) no. 2 German Trademark Act (Markengesetz – MarkenG) regarding the designation “Black Friday”. As grounds, the Federal Court of Justice states, in essence, that a requirement of availability under that provision does not mean that the sign constituting the trademark must be used descriptively for the goods or services claimed at the time of the application for registration. It is sufficient that it is already foreseeable at the time of filing that the sign will in future have a descriptive meaning for the goods or services in question.

In the case at hand, it was therefore decisive that, according to the Federal Court of Justice, there was sufficient evidence at the time of the trademark application in 2013 that in future the designation “Black Friday” would evolve in Germany into a keyword for a discount campaign in electrical and electronic goods retail.

III. Conclusion

Since the ruling of the Federal Court of Justice cannot be challenged, the word mark “Black Friday” will be deleted from the register of trademarks for the services in question in these proceedings. Where the trademark is still registered for other goods and services, it remains to be seen whether the decision by Berlin Regional Court remains in place. Only then would the words “Black Friday” – at least as a standalone expression – no longer be protected by trademark law.