Black Friday cannot be a trademark in Austria

pexels-photo.jpgBlack Friday is one of the most anticipated days of the year for consumers when it comes to promotions and trade deals. Many people are attracted by the idea to buy something at a serious discount.

This is one of the reasons though why there are so many attempts for it monopolizing as a trademark sign.

In Europe, for example, there are several such cases. One of them, in Austria, has come to an end recently when the Austrian Court ordered that Black Friday cannot function as a trademark because it is not distinctive enough for the classes of goods and services for which the trademark was applied for.

In many countries around the world, even not English speaking, the phrase is well-known as a meaning for most of the people and as such, it cannot serve as a source of origin.

The case concerns an attempt by a Chinese company, which as an owner of registered Black Friday mark, tries to give licenses to Austrian companies that want to use it in their promotions.

This is not the onliest case, however. There is a similar lawsuit in Germany, which now is pending before the Federal Patent Court.

In Bulgaria, there were several Black Friday trademarks which now are canceled.

A brief search in the TMView database shows that there are even more such trademarks around the world. Most of them, which are only words marks or in combination with undistinctive visual representations, are ended.

Nevertheless, there are other similar marks that include additional words or graphics that are registered. The question here is to what extent they are useful considering their low distinctive character.

Source: Axel Anderl and Alexandra Ciarnau for Lexilogy.

Breaking news – Youtube is liable for copyright infringement in Austria

organic-1280537_960_720.jpgThe Commercial Court of Vienna has issued a decision according to which YouTube is liable for copyright infringement of works uploaded by its users in Austria.

The case concerns allegations by the Austrian broadcaster Puls4 that its content was been uploaded without permission on Youtube.

The defensive position of Youtube was that the company operates in compliance with the requirement of the E-Commerce Directive according to which:

Article 14: Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

This option is possible only in the case of a “host provider”. The Vienna Court, however, based its decision on the European Court’s practice, which determines that there is no “host provider” when:

“. . . the service provider, instead of confining itself to providing that service neutrally by a merely technical and automatic processing of the data provided by its customers, plays an active role of such a kind as to give it knowledge of, or control over, those data.” (ECJ in L’Oreal ./.eBay)

The Court concluded that Youtube is not only a service provider but manage the uploaded data, promote it, measure the user’s activity etc. So in light of this, the company is not a neutral mediator.

It’s highly likely that this decision will be appealed but nevertheless, it shows the current more restrictive approach among different European courts toward the internet providers.

Source: Morrison & Foerster LLP – John F. Delaney, Christiane Stuetzle and Christoph Wagner, for Lexology.

Image: freephotocc, Pyxaby.

Parfumes and exhaustion of rights in Austria

aromatherapy-3173580_960_720The Supreme Court in Austria ruled in a lawsuit that had been initiated by Davidoff against a trading company in the country which was selling original perfumes branded with trademarks  Davidoff – word and combined. According to Davidoff this could lead to a consumer misleading that this company is part if its distributional channel, taking into account that the company put the trademarks on its website.

According to the court, however, there is no breach of law in the case at hand because the trademark use was only for information purposes and it is in accordance with the legislation on trademark exhaustion, in particular:

A mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.

Source: Taylor Wessing, Lexology.