Ultra short-form licensing

Ultra short-form licensing

Electronics retailing giant Harvey Norman’s bid to use the popular “Black Friday” trademark is set for a Federal Court showdown with a prominent Australian fashion label in June 2020. The case could set a precedent for other retailers seeking to use the popular “Black Friday” phrase in relation to the massive sales weekend which traditionally occurs on the day after US Thanksgiving.

Louise Brunero and Jeff Bergmann from Solubility discuss a novel approach to trade mark licensing.

Factory X, which owns prominent fashion brands, Gorman and Dangerfield, first registered the trademark for “Black Friday” in 2008 for a new brand aimed at the “gothic market”. While attempting to register its own “Black Tag Friday” trademark, Harvey Norman recently sought to remove the “Black Friday” mark from the register for non-use.

Factory X is contesting Harvey Norman’s application to have the trademark struck off, having previously prevented a German company from using the “Black Friday” trademark while trading in Australia without express licence from the fashion retailer. Factory X has set up a website linking to the registered Australian trade mark, informing retailers that they need permission to use the phrase and inviting them to complete an application form and pay an undisclosed fee, for permission for use for of the term “Black Friday” for 12 months following payment. The “Terms of Use” (set out in full below) comprise the shortest trade mark licence we’ve ever seen, and appear to have been drafted without regard to section 26 of the Trade Marks Act.  We will be watching developments with interest.

  • Faxtory (sic) X Pty Ltd has rights to use your brands logo on this website.
  • You have the right to use the trade mark Black Friday for the duration of 12 months after payment is received.