‘Black Friday’ trade mark war in Australia

In 2007, Australian fashion retailing company, Factor X, registered the trade mark ‘Black Friday’ for their ‘gothic’ clothing line, granting them ownership under two classes covering sale of clothing and other fashion accessories.

Since their registration, the term ‘Black Friday’ has become associated with retail sales at the end of November. This association means that in some countries, such as Germany, the term is considered public domain and the trade mark ownership cannot lie exclusively with a sole owner.

However, there is currently no such protection in Australian law, and Factory X declared that any promotions using the phrase within Australia are hence illegal. Furthermore, Factory X have issued legal notices to several companies using the phrase in advertising, asking them to refrain from using the phrase again and provide Factory X with details of all profits and revenue generated while using the trademark. Factory X claims that they reserve the right to recover any profits resulting from the use of the trade mark, and will commence proceedings if their demands are not satisfied.

Factory X have prosecuted companies in the past for utilising the trade mark, succeeding in obtaining a declaration from the court in 2017 that a German company, CupoNation, had infringed the trade mark for using ‘Black Friday’.

However, Harvey Norman, an electronics retailer, recently won against Factory X, allowing registration of the trade mark ‘Black Tag Friday’. The retailer also sought to have the ‘Black Friday’ trade mark struck off the register following their own registration, although this request was withdrawn on the 24th November 2020.

As the phrase ‘Black Friday’ has become increasingly popular in Australia in recent years, there is potential that the trade mark could be challenged in the future where it is found to have become too genericised, as seen with phrases such as cellophane and zipper.

Interestingly, an attempt from retail brand Kogan to register the trade mark ‘Cyber Monday’ in 2017 was deferred.

By Ellie King, student from Southampton Solent University

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