Black Friday is known for being the time of the year that businesses offer impressive discounts to customers following Thanksgiving. Naturally, you’d see lots of businesses using the term ‘Black Friday’ to promote their sales, particularly as the day picks up popularity Down Under.
However, ‘Black Friday’ is actually a registered trade mark in Australia. If your business has used the term in the past week or so, it’s important to know about trademarking and how it can affect you.
What Is A Trade Mark?
A trade mark is a form of Intellectual Property (IP) that is used to protect your business ideas, brand or logo. It’s a very common way to ensure that no one else steals your IP, and you’d have the exclusive right to the use of that property.
For example, McDonald’s ‘Big Mac’ has been a registered trademark since 1973. This means the trade mark ‘Big Mac’ belongs to them, and no one else of the same class or category could use it. In a recent case, McDonald’s argued that Hungry’s Jack’s ‘Big Jack’ was registered in bad faith and was “deceptively similar” to McDonald’s trademark (you can read more about this here.)
This is a situation where a business is entitled to take legal action against anyone who appears to be using their registered trademark (or something very similar to it) and is likely to confuse customers.
They might also demand that they receive the profits generated from the use of any registered trademark as the rightful owners.
Is ‘Black Friday’ A Registered Trademark?
As reported by the Sydney Morning Herald, Factory X, a national retailer, registered the term ‘Black Friday’ in the class of clothing and fashion in 2007. This means that no other business (at least in the fashion industry) would be able to use ‘Black Friday’ for their own business purposes because it is owned by Factory X.
However, there is one small problem. ‘Black Friday’ is a very common term used for the popular November sales. There’s no doubt you’d have seen a few stores here and there use the term on their websites and social media.
Nonetheless, Factory X is planning to take legal action against other fashion retailers and brands who have used Black Friday to promote their sales. In addition, Factory X’s legal notices also state their intention to ‘recover the profits generated during the Black Friday sales’.
While they are entitled to take legal action, it can be inconvenient for the businesses who use the term for their advertising efforts. Not to mention, using the term itself can be seen as common business practice during this time of the year.
Harvey Norman attempted to have ‘Black Friday’ removed from the IP Australia register, however this was unsuccessful with IP Australia.
Can I Oppose A Trade Mark?
There are many ways to go about trade mark oppositions and infringements.
A popular example of a trade mark infringement is the case with In N Out. When Australian food chain Down N Out was introduced, In N Out argued that their name and logo was too similar to their registered trademark and would see customers associate the name with the American food chain.
Generally speaking, a trade mark can be removed on the grounds that it is not distinctive. Since ‘Black Friday’ is very commonly used as part of the sales period, Factory X could have a weaker claim.
But, as IP lawyer John MacPhail pointed out in the Sydney Morning Herald’s article, it could be difficult to remove the term ‘Black Friday’ from the IP Australia register. Businesses would have to prove that the term itself is generally accepted within the industry. Black Friday is more popular within the US than it is in Australia, so this could be a significant hurdle.
If your business is navigating through the world of trade marks in any way, Sprintlaw can help. We have a team of experienced lawyers who know the ins and outs of trademarking, and can offer some valuable advice if you’ve found yourself in a trade mark opposition.
Feel free to reach out to us at firstname.lastname@example.org or contact us on 1800 730 617 for an obligation free chat.
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