From Black Friday to Click Frenzy: Retailers warned to be careful when using trademarked sale names

Retailers should exercise caution when adopting new sale names that could, in fact, be registered as a trademark by another company.

Large fashion retailer, Factory X, which owns Gorman, Princess Highway and Dangerfield, has reportedly contacted fashion retailers about taking legal action over their use of the term ‘Black Friday’ — a term Factory X has registered as a trademark, according to The Sydney Morning Herald.

While Black Friday is used globally to refer to sales taking place after US holiday Thanksgiving, WRP associate and specialist in intellectual property law Stephen Annicchiarico says businesses should exercise caution when using terms that may be registered trademarks.

Speaking to SmartCompany, Annicchiarico says it is questionable whether Factory X could enforce the rights it has under the trademark registration in this situation.

“It’s a little bit questionable. If you remove the law from this, if you look at every store in Australia over the last two weeks, they have been using the term Black Friday in connection with retail services,” Annicchiarico says.

According to the Australian trademark register, Factory X registered Black Friday in 2007 as a brand name linked to retail services, clothing, footwear, headwear and accessories.

Annicchiarico says for a trademark to be registered it needs to be distinguishable, and once it is no longer distinguishable or is deemed generic, it can lose registration.

“Genericism is basically around whether a trademark can be deregistered if a member of the public or the industry find that the word is descriptive after the date of registration,” he says.

Good examples of well-known brands with trademarks that became generic are “trampoline” and “zipper”.

If the dispute eventuates, the Australian Trade Marks Office will make a determination, and if that decision isn’t to everyone’s satisfaction, it can be appealed at the Federal Court.

When asked about other large sales that retailers participate in, such as Click Frenzy, Annicchiarico says retailers should be cautious and properly engage in official sales.

Click Frenzy has been registered as a trademark multiple times and is not only a business but also an online sales event.

“Click Frenzy is the one website where all vendors are able to do sales … it’s all connected,” Annicchiarico says.

“I imagine there are licence agreements between Click Frenzy and the other retailers who are participating to use the Click Frenzy trademark,” he says.

“So, I would certainly advise smaller businesses to be careful and exercise caution when using the Click Frenzy name unless they have been given expressed consent from the Click Frenzy business.”