Partial deletion of the word mark "Black Friday" confirmed by BGH

The German word mark "Black Friday" (Ref. 30 2013 057 574) was registered in 2013 by Klingenthal Südring GmbH for the Nice classes 9, 35 and 41 and thus, among other things, for multimedia devices, advertising, marketing and reporting. In 2016, the trademark was transferred to Super Union Holding Ltd. which has taken legal action against the use of the brand name by third parties several times since then.

In response to numerous cancellation requests, which were based in particular on objections regarding absolute grounds for refusal according to Section 50 of the German Trademark Act, the German Patent and Trademark Office (DPMA) initially decided to cancel the word mark in full from the German trademark register in its decision dated August 27, 2021. The trademark owner appealed against this decision before the Federal Patent Court (BPatG), which partially revoked the DPMA's decision for complete cancellation of the word mark in its decision of February 28, 2020 (30 W (pat) 26/18). However, the cancellation was upheld for the field of marketing of electrical goods as well as related trade and advertising services, since in the BPatG's view there was already a need to keep the mark free in these fields at the time of the trademark application pursuant to Section 8 (2) No. 2 of the German Trademark Act.

The trademark owner filed a renewed appeal against the decision of the BPatG before the Federal Court of Justice (BGH). However, in its decision of May 27, 2021 (I ZB 21/20), the BGH dismissed the appeal and thus confirmed the previous decision of the BPatG in its entirety.

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