A tale of Black Friday

While many of our readers will be shopping over the weekend, this Kat has prepared a post on the German “Black Friday” litigation to keep you company while you’re queuing.

 

On October 30, 2013, a German company applied to the German Trade Mark Office (DPMA) for a word mark “Black Friday”. On December 20, 2013, the trade mark was registered for a large number of goods and services in classes 9, 35 and 41.

In 2016, the trade marks rights were transferred to a Hong Kong-based company, Super Union Holdings Ltd. The new right holder started sending warning letters, demanding that the recipient companies stop using “Black Friday” in their November discount campaigns.

Several of the recipient companies filed actions with the DPMA to invalidate the registration. These actions were based on various claims resting on absolute grounds: lack of distinctiveness (Sec. 8(2)(1) German Trade Mark Act), descriptiveness (Sec. 8(2)(2)), and bad faith (Sec. 8(2)(14)). The DPMA cancelled the registration of “Black Friday” due to lack of distinctiveness. The right holder appealed to the German Federal Patent Court.

The Federal Patent Court annulled the decision (case 30 W (pat) 26/18). It maintained the validity of “Black Friday” for goods and services in Classes 9 and 41, and some of the goods in Class 35. It however cancelled the trademark for those services of Class 35, which are related to trade of electrical and electronic goods and for their advertising.

The Federal Patent Court first analysed the sign “Black Friday” as applied to goods and services claimed, and concluded that it was inherently distinctive on the filing date (October 2013). The crucial question was whether the originally distinctive sign had become a common designation or a catchphrase for a discount campaign day before the filing date, that is, whether the sign was already descriptive in October 2013.

To determine this, the Federal Patent Court reviewed extensive evidence regarding the public’s perception of the sign as of October 2013. The evidence included Google requests data concerning “Black Friday”, information on Black Friday campaigns launched by companies such as Apple, and journal articles from 2013 showing that Black Friday was still an unknown concept to most Germans.

Based on the overall evidence, the Federal Patent Court concluded that “Black Friday” had no descriptive meaning for the target public in October 2013. However, continued the Federal Patent Court, the wording of Sec. 8(2)(2) prohibits registration of signs that “may serve” as descriptive. That is, this absolute ground can also apply to changes in the meaning to the sign that occur after the filing date.

This means that it is sufficient if the sign in question has no descriptive meaning at the time of filing, but it is already foreseeable at that time that the sign will in future acquire a descriptive meaning for the goods or services in question. Back in 2013, there were indications that “Black Friday” would develop into a catchphrase for a discount campaign for electrical and electronic goods and related advertising (Apple, for instance, was already offering Black Friday discounts in Germany).

Thus, the relevant services in Class 35 were invalidated. However, because in 2013 Black Friday discounts were being offered for only a limited range of goods, the trade mark remained valid for all other goods and services.

The Federal Patent Court also indicated that some of the invalidity applicants claimed bad faith, but these applicants provided no further arguments in this regard. Warning letters to competitors is irrelevant for establishing bad faith, because such actions are within the scope of a right holder’s legal rights.

In May 2021, the Federal Court of Justice in case I ZB 21/20 affirmed the decision by the Federal Court of Justice , t thereby invalidating the “Black Friday” trade mark for certain services in Class 35. The trademark was remained valid in Classes 9 and 41, and in part of Class 35.

The company, which runs “BlackFriday.de” (an aggregator of relevant discounts), had filed in April 2019 a request for revocation of “Black Friday”, alleging non-use by the right holder. In this action, in April 2021 the Regional Court of Berlin revoked “Black Friday” in all the classes that had remained in force after the parallel invalidity proceedings described above. According to the court, “Black Friday” was used descriptively, and thus does not constitute protectable trade mark use. Last month, the Higher Regional Court of Berlin confirmed this ruling (5 U 46/21).

If this were not enough, Black Friday GmbH and Super Union Holdings Ltd. both sought to register “Black Friday” and “Summer Black Friday” as European Union Trade Marks (EUTM). The application for word mark “Black Friday” was filed by Black Friday GmbH in February 2020. The application covered a long list of goods and services in a number of classes, including Class 9 and 35. The examiner refused the application based on Art. 7(1)(b)(EUTMR), ruling that it was devoid of any distinctive character in respect of all the goods and services applied for. This refusal was confirmed by the Board of Appeal (BoA) in case R0585/2021-1.

Regarding the application for “Summer Black Friday” was somewhat more successful. It was filed by Super Union Holdings Ltd., also in February 2020. The application covered a lengthy list of services in Class 35. The application was partially rejected by the examiner, also due to lack of distinctiveness. This refusal was confirmed by the BoA in case R0153/2021-1.

According to the BoA, “Summer Black Friday” conveys the meaning that it is a special sales day which falls into the summer. The combination of “Summer” with “Black Friday” was, however, recognised as distinctive for other services in Class 35, including “writing of publicity texts”, “tax consultancy” or “rental of vending machines”.

The upshot is that, at least in Germany, the status of Black-related marks with respect to various services in Class 35 is not black and white.