“black Friday” – Now Freely Usable For Promotions 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
.

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

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