Black Friday - the trademark cancellation application has been filed

Black Friday is not only something for bargain hunters, the law courts have also been dealing with it for some time now.

Originally, Americans call the Friday after the traditional Thanksgiving as Black Friday. On this bridging day, many Americans are off and ring in the Christmas season with their first gift purchases. In the last years and probably also by the marketing of a large, world-famous online shopping website this trend came also to Germany. So it's no wonder that in 2012 the domain black-friday.de was launched as the "oldest portal" for bargain hunters in Germany for this day.

Another businessman who wanted to jump on this trend registered the word mark "Black Friday" at the German Patent and Trade Mark Office (DPMA). However, it was registered few months later than the registration of the domain on 20.12.2013.

Years of disputes and warnings passed by - especially for traders advertising with "Black Friday" - as well as the receipt of 16 applications for cancellation of the trademark due to absolute grounds for refusal. In spring, the time had come and the DPMA had cancelled the trade mark due to lack of distinctive character. In September 2019, a date was convened for oral proceedings due to complaints by the trade mark proprietor at the Federal Patent Court (BPatG). Until now, the trade mark is still valid and the BPatG has not yet pronounced a final judgment as to whether this will remain the case for all classes.

In addition, the portal black-friday.de has filed a request for cancellation due to expiration. In contrast to domains, which in principle can also be passively registered, trademarks must be seriously used on the market before the 5-year grace period has expired (Sec. 49 (1) Trademark Act). According to black-friday.de, this does not seem to be the case here. It remains to be seen how the courts will deal with this and the trademark "Black Friday".

It may be worthwhile to look at trademarks and domains together. Both can exist alongside each other, or - as becomes clear in this case - restrict each other. We are looking forward to support you: 123domain.eu is a specialist in the domain sector and has been working for many years with aufrecht.de, a law firm that has deliberately focused on Internet law and intellectual property protection.

Sources: DPMA, black-friday.de, IT Law Firm

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