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Federal Patent Court does not delete trademark "Black Friday" completely!
The Federal Patent Court has ruled that the disputed word mark “Black Friday” must be cancelled for some services in the field of “advertising”. However, this remains in place for other services.
The court thus confirmed its initial assessment from the oral hearing on September 26, 2019, according to which the comprehensive cancellation of the trademark by the German Patent and Trademark Office should be revoked, but confirmed for some crucial advertising services.
Thus, the Federal Patent Court considers the trademark “Black Friday” for the service “advertising” not eligible for protection. Among other things, the trademark would have to be cancelled for the services “marketing”, “organization and implementation of advertising events”, “planning of advertising measures”, “dissemination of advertisements” and “advertising on the Internet for third parties”, as well as a large number of other services related to advertising.
The Federal Patent Court has allowed the appeal on points of law. Accordingly, the parties involved may file an appeal with the Federal Court of Justice within one month of service of the order.
However, since the “Black Friday” trademark will remain in use for many goods and services even after the decision of the Federal Patent Court and could thus continue to cause confusion among existing and potential partners, the risk of warning letters has not been banished. However, further legal proceedings are pending, as an action for cancellation of the trademark on grounds of revocation for non-use was filed with the Berlin Regional Court in November 2019. According to § 49 para. 1 MarkenG, a trademark must be put to genuine use after its registration for each individual product or service protected. If this does not happen, the unused goods and services can be deleted upon request. It is not sufficient for a right-preserving use that the term “Black Friday” is somehow used. Rather, the term must be used in such a way that it is to be evaluated as an indication of the goods or services from a very specific company.
By the way, this is a fact that I always point out to inexperienced trademark applicants!
Marian Härtel is a lawyer and entrepreneur specializing in copyright law, competition law and IT/IP law, with a focus on games, esports, media and blockchain.
