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"Black Friday" for everyone?

Last year, the Vienna Higher Regional Court (Oberlandesgericht Wien) ruled on the legal dispute concerning the name "Black Friday". The verdict came in March 2019: the word mark is not worthy of protection.

"Black Friday" is the Friday after Thankgsgiving. It makes the kick-off of the annual Christmas trading period and attracts customers into shops with favourable offers and promotions. For retailers, it is one of their strongest trading days in the year. In 2013, in order to secure the right to the name "Black Friday", the Hong Kong-based company Super Union Holdings Ltd. had the term registered as a national word mark in Germany. This was followed shortly afterwards by a deluge of warnings designed to prevent German retailers using the term "Black Friday"in their advertising if they did not have a licensing agreement. In addition, in 2017, an international trademark was registered on the basis of the German trademark, which also claimed protection in Austria. The Austrian Patent Office refused to grant protection. Nevertheless, in 2018, the Austrian Trade Association itself registered a word and design mark for Black Friday [Schwarzer Freitag] in order to counteract the plan of Super Union Holdings Ltd. A full-blown contest - trademark versus trademark - began.

Court declares trademark not worthy of protection

The opposition to the word and and design mark filed by the Trade Association was rejected in the court of first instance. At the same time, legal proceedings to grant protection of the international tradamark "Black Friday" were pending in Austria at the Vienna Higher Regional Court, and came to an end in March last year. The proper appeal on a point of law brought by Super Union Holdings Ltd. was found to be not admissible. Instead, the Court declared the tradmark unworthy of protection.
"As 'Black Friday' is predominantly descriptive and/or promotional and does not contain any statement requiring interpretation [...], the mark lacks the distinctive character pursuant to Article 4 par. 1 (3) MSchG [Austrian Trademark Protection Act]", states the ruling (133R126/18d) of 5 March 2019. The refusal of protection for the international tradmark in Austria is legally binding. The situation is similar in Germany: the German Federal Patent Court recently ruled that the "Black Friday" trademark is not eligible for protection for the "advertising" service. In addition, the trademark must be removed for the services associated with advertising. Nevertheless, the "Black Friday" trademark has remained in existence in Germany for a variety of other goods and services.

"Black Friday" for everyone?

The rulings represent an initial success and an important sign for all retailers wanting to use "Black Friday" in their advertising. However, the concern surrounding licensing contracts for Austrian retailers, and the costs involved, is not yet over. The Trade Association, however, has now deleted its own word and design mark, which it had filed with the Austrian Patent Office. Nonetheless, there are other registered trademarks for Black Friday. Moreover, in the interim, news trademark applications have also been received by the European Union Intellectual Property Office and the Austrian Patent Office. The situation remains exciting.

May 28, 2020
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