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"BLACK FRIDAY" - NOW FREELY USABLE FOR PROMOTIONS IN AUSTRIA

July 2019 - Intellectual Property. Legal Developments by Dorda.

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Black Friday is unquestionable one of the most profitable and busiest days of the year for retail, particularly online. Worldwide almost all online store do offer sales or special promotions on Black Friday or Cyber Monday. Already after this practice has established online, a trademark for "BLACK FRIDAY" was registered in Germany back in 2013. In 2016 a Chinese company acquired the trademark and then filed in 2017 for its extension to Austria. Based on the registered trademark, it granted exclusive rights to an Austrian company, which licensed usage rights to various partner stores against remuneration. Further, an exclusive "Black Friday-Cooperation Program" was established. Non-partners who used the event name or trademark were prosecuted and requested to either pay a license fee or refrain from running Black Friday promotions. Some followed the request and entered into license agreements. Some, however, did challenge the validity of the trademark. Finally, respective proceedings to check the actual protection of the trademark were initiated. Austrian courts now held that the trademark "BLACK FRIDAY" is not protected in Austria.

Black Friday is unquestionable one of the most profitable and busiest days of the year for retail, particularly online. Worldwide almost all online store do offer sales or special promotions on Black Friday or Cyber Monday. Already after this practice has established online, a trademark for "BLACK FRIDAY" was registered in Germany back in 2013. In 2016 a Chinese company acquired the trademark and then filed in 2017 for its extension to Austria. Based on the registered trademark, it granted exclusive rights to an Austrian company, which licensed usage rights to various partner stores against remuneration. Further, an exclusive "Black Friday-Cooperation Program" was established. Non-partners who used the event name or trademark were prosecuted and requested to either pay a license fee or refrain from running Black Friday promotions. Some followed the request and entered into license agreements. Some, however, did challenge the validity of the trademark. Finally, respective proceedings to check the actual protection of the trademark were initiated. Austrian courts now held that the trademark "BLACK FRIDAY" is not protected in Austria:

The court held that the word "BLACK FRIDAY" cannot be monopolised in Austria, since it lacks of distinctiveness. The term is mere generic. Therefore, the international registration for Austria has been refused. The decision is final and enforceable. Thus, anyone may use the popular advertising term "BLACK FRIDAY" in Austria for free without the need of entering into license agreements and to pay remunerations. If a company entered into a license agreement in the past, one may possibly challenge the payment obligation thereunder. However, the decision covers only the word trademark. Any registered sign combining a distinctive word and figurative design with the term is not covered. Further, no one is entitled to make the impression to be member of the Black Friday-Cooperation Program without having entered into a respective agreement. Thus, any promotion using the term Black Friday should be checked to comply with the outlined framework.

The decision is also limited to Austria. In other jurisdictions, the trademark might still be enforceable, although also challenged. In Germany, for example, the basis mark is challenged in court proceedings which is now pending before the Federal Patent Court as court of appeal. Thus, one has to be cautious with for e-commers business typical cross border marketing campaigns not to infringe still valid registrations in other jurisdictions.

Axel Anderl, Managing Partner and Head of the IT, IP and Data Protection Practice at DORDA Rechtsanwälte GmbH

Alexandra Ciarnau, Associate and member of the IT, IP and Data Protection Practice at DORDA Rechtsanwälte GmbH