The German Federal Patent Court (BPatG) has decided that the word mark “Black Friday” will continue to enjoy trademark protection. In other words, the term “Black Friday” remains a registered trademark and may not be used without permission.
However, the BPatG also considers that the term “Black Friday” does not enjoy full trademark protection when used for “analytics platforms for marketing & e-commerce,” the “organization and implementation of advertising events,” the “planning of advertising measures,” the “distribution of advertisements,” “advertising on the Internet for third parties” or any of several other services related to advertising. These include retail and wholesale services for consumer electronics, as numerous online campaigns in this area existed before the trademark application was filed. The term may be used without a license for the services mentioned.
With this decision, the BPatG has drawn only a preliminary boundary to calm the long-standing dispute over “Black Friday.” The term was registered as a trademark at the German Patent and Trademark Office (DPMA) in 2013. The owner of the trademark is Super Union Holdings Limited of Hong Kong. Initially, about a dozen companies, including the payment service provider Paypal and the sports shoe manufacturer Puma, succeeded in getting the DPMA to revoke word mark protections for “Black Friday,” but Super Union appealed the decision.
The disputes in Germany, however, are not over. In April, the Regional Court (LG) of Düsseldorf will hear the main proceedings on the question of whether Super Union filed a wrongful warning against the Black-Friday.de Internet portal for trademark infringement. The portal’s operator also claims to have filed suit with the Regional Court of Berlin in November 2019 for revocation of the trademark over its non-use.