Back in Black

Black Friday is a US institution that has been eagerly adopted across the capitalist world. Falling on the day after Thanksgiving, it traditionally marks the start of the Christmas shopping season and has become economically significant even in countries which lack the same cultural background.

Like any good business idea, it attracts a lot of attention from enterprises keen to claim it as their own, in some cases exclusively so. In 2020, as Australian retailers were celebrating this festival of consumerism at the end of an abnormally tough year, some had their festivities rudely interrupted by lawyers’ letters from fashion conglomerate Factory X claiming infringement of a registered trade mark.

And indeed, Factory X does have BLACK FRIDAY registered as an Australian trade mark. So, case closed? Well, no. It is not as simple as that. For a start, Factory X’s registration only directly applies to that exact mark use in relation to clothing and related “retailing and wholesaling services” – i.e., stuff to wear and the process of buying and selling it.

It also extends slightly further to cover similar goods or services and deceptively similar marks, but it will not stretch to cover completely non-deceptive marks or dissimilar goods. That might explain why Harvey Norman, for instance, promotes its own BLACK TAG FRIDAY sale for its furniture and home electronics – a markedly different proposition which may lie just outside the ambit of Factory X’s rights.

But even if Factory X are only targeting competitors in the fashion trade, the outcome is far from certain. Registered trade marks are intended to function as badges of origin i.e. they should indicate who you’re dealing with, not what you’re buying, or where, or when. If BLACK FRIDAY suggests a specific calendar date rather than a specific brand, it is not fulfilling this function. And if it cannot actually differentiate Factory X from its competitors, it is possibly generic and therefore not a valid trade mark at all.

Even if BLACK FRIDAY is held to be a valid trade mark, it will not be infringed by a third party using the phrase “Black Friday” in good faith to describe some characteristic of the goods or services they are providing, or the time those services are provided. In other words, a genuine Black Friday sale can be referred to as such without infringing any registered rights.

None of this seems to have stopped Factory X from asserting their rights and bullishly laying claim to their competitors’ profits by way of compensation. It is a bold move but one which puts their trade mark at risk of being challenged and invalidated. Whatever circumstances applied 10 years ago (when they secured their registration, and when Black Friday was perhaps less well known) may not pertain now, so the mark is far from invulnerable.

Unless someone has the budget and the bottle to put up a fight and take BLACK FRIDAY down, the registration will endure. Factory X may be banking on their size and the complexity of trade mark law to scare their competitors into compliance and score a landgrab in terms of branding (a “brandgrab”?). But, as Black Friday grows in commercial importance and public acceptance in Australia, they may find themselves fighting a losing battle. In similar news, Australian ecommerce giant kogan.com has applied to register CYBER MONDAY (Black Friday’s online twin) for electronics and retail services. We can expect more of this to come.

Trade mark law is complicated and is regularly misunderstood and misreported. It certainly helps to have a specialist lawyer on your side to guide you through the intricacies of what is and is not permitted, and what you can and cannot expect to achieve. If you have any questions about enforcing or defending your brand, please get in touch with our experts.

This memo presents an overview and commentary of the subject matter. It is not provided in the context of a solicitor-client relationship and no duty of care is assumed or accepted. It does not constitute legal advice.

© Moulis Legal 2020

Key contacts
Graeme Fearon
Special Counsel