Can one single company have an exclusive right to use the term “Black Friday”?
Since 2013, the term “Black Friday” is registered as a trademark in the trademark register, so that a single company has the right to advertise therewith. The trademark covers more than 900 goods and services – finding a niche for the own product in order to advertise it with a discount on Black Friday seems almost impossible. Once the application for registration has been resisted and Black Friday has been advertised nevertheless, it has often not taken long for a warning to be issued. This could now change, because according to the judgement of the Berlin Court of Appeal (Berlin Court of Appeal judgement v. 14.10.2022, ref. 5 U 46/21, not legally effective), the trademark is now to be cancelled, to the delight of many, with the consequence that the term “Black Friday” can now be used freely again.
Super Union Holdings Ltd, based in Hong Kong, registered the term “Black Friday” as a trade mark with the German Patent and Trade Mark Office (DPMA) in 2013. Since then, the company has held the trademark rights for the term. As a result, companies that offered discounts on the last weekend of November to ring in the Christmas shopping season were warned by Super Union Holdings Ltd. for using the term “Black Friday”. To combat these warnings, some companies, including the website www.blackfriday.de, applied for cancellation of the trademark. Initially, the application was granted.
The website www.blackfriday.de was not satisfied with this and went to the Berlin Regional Court with a revocation action. The aim of the action: to declare the trade mark registration revoked, i.e. to establish the lack of use of the trademark “Black Friday” by Super Union Holdings Ltd. The Berlin judges ruled in favour of the plaintiff, which the Berlin Appellate Court now confirmed on 14 October 2022.
The Berlin Regional Court based its decision on Section 49(1) of the Trademark Act. According to this, a trademark must actually be used in order to remain recognised as such. Thereby, the burden of proof lies with the defendant. This is precisely where the judgement comes in: Super Union Holdings Ltd. did not meet its burden of proof. They could not convince the judges to actually use the trademark “Black Friday” instead of only using it descriptively. The trademark protection did not apply in the present case because the term registered as a trademark must function for customers as an indication of the services of a certain company – which is not the case with “Black Friday”. The term does not refer to the defendant or its services, but to a generally applicable discount campaign.
The decision of the Berlin Court of Appeal (Berlin Court of Appeal, judgment v. 14.10.2022, ref. 5 U 46/21) is not yet final. It remains to be seen whether Super Union Holdings Ltd. will take action against the decision or resign and finally have the once registered trademark “Black Friday” invalidated.