Black Friday: Back in Black

By Brand Heeler

A trade mark clash over a major retail event

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’s 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 won’t 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’s not fulfilling this function. And if it can’t actually differentiate Factory X from its competitors, it’s possibly generic and therefore not a valid trade mark at all.

And 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’re 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’s 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.

But 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 has applied to register CYBER MONDAY (Black Friday’s online twin) for electronics and retail services. Expect more of this to come…

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.