News & Insights

The retail phenomenon that is Black Friday has passed. While some of us are waiting with dread for our credit card statement, some retailers are reportedly receiving legal demands from Factory X Pty Ltd, which has an Australian registration for the trade mark “BLACK FRIDAY”.

Reportedly Factory X is targeting fashion businesses, as its registration for “BLACK FRIDAY” covers the services of “retailing and wholesaling services of clothing, footwear, headgear and fashion accessories”.

what trade mark registration protects

To understand the key issues here, it is necessary for a little Trade Marks 101.  Under section 17 of the Trade Marks Act 1995 (Cth):

“A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

A sign can be very diverse. It can be a “word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”.

When it comes to infringement, section 120(1) provides that:

“A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.”

Was Factory X’s trade mark infringed?

Looking at the advertising that inundated our inboxes and letter boxes last week, the consistent impression of various “Black Friday sale” promotions was that they were referring to a sale that coincided with the day known as Black Friday. Black Friday is the Friday following the Thanksgiving Day public holiday in the US and is a traditional time for sales promotions, akin to the Boxing Day sales in Australia.

From a trade mark perspective, it is questionable whether those retailers were using the term “Black Friday” as a trade mark.  That is: as a means of distinguishing their goods from other traders’ goods. While there may have been exceptions, the general answer is likely to be “no”. They were generally using it to indicate the timing of their sales.

In Australia there is a further argument that such retailers can avail themselves of Section 122 of the Trade Marks Act 1995 which sets out a number of exceptions to what would otherwise be infringement. Under section 122(1)(b)(ii), a person does not infringe a registered trade mark when the person uses a sign in good faith to indicate the time of rendering of services. For the recipients of demands from Factory X, “Black Friday” will have referred to the time that their retailing services were provided.

any lessons?

There are certainly some lessons that can be learned from this.

In adopting a new trade mark, always choose one that others are not going to want to use in a non-branding sense.  It is difficult to imagine that when Factory X registered its “BLACK FRIDAY” trade mark in 2007, it was unaware of Black Friday sales in the US. Sometimes such occurrences can be impossible to predict; when they occur, it is just bad luck. But sometimes businesses try to be clever in cashing in on a trending term and get caught out.

What if you’re a retailer wanting to get on the Black Friday bandwagon in 2021? You should ensure that your advertising clearly uses the term “Black Friday” in a descriptive sense:

• make sure your sale coincides with Black Friday;
• display your actual branding prominently;
• get an IP lawyer to check your promotional material in advance.

At Macpherson Kelley, our intellectual property team is always happy to help.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.