Fashion label takes Harvey Norman to court over popular Black Friday trademark

The parent company of prominent fashion brands Gorman and Dangerfield is locked in a court battle against Gerry Harvey's retailing giant Harvey Norman over the use of the phrase 'Black Friday'.

Factory X Pty Ltd has taken Harvey Norman to the Federal Court after the ASX-listed retailer attempted to have the fashion label's trademark over 'Black Friday' struck off the register.

Factory X, which owns popular clothing brand Gorman, has been ramping up the enforcement of its ‘Black Friday’ trademark.Credit:Paul Jeffers.

Factory X first registered the trademark for Black Friday in 2008 for a new brand aimed at the "gothic market", but since then the term has become synonymous with a massive sales weekend, which has surged in popularity in the past few years.

In late 2017, Harvey Norman filed a trademark for the phrase 'Black Tag Friday', intending it for a promotional campaign where products with black tags would be discounted on Friday.

Factory X opposed the filing, claiming it was similar to its own but an IP Australia ruling passed down late last year ruled Harvey Norman's trademark was not sufficiently similar and that Factory X had failed to establish a reputation for its 'Black Friday' brand.

During the proceedings, Harvey Norman filed a removal application for non-use, claiming that Factory X had not used the trademark and it should be struck from the register.

Harvey Norman is currently in court with Factory X over the use of its Black Friday trademark.Credit:Scott Barbour

Now the fashion brand has taken the challenge to the Federal Court, disputing the electronics retailer's application to have the trademark dismissed.

The case is set to be heard in June and could set a precedent for retailers looking to participate in Black Friday sales. A win for Factory X could allow it to enforce its trademark against more companies.

Factory X won a case against German coupon company CupoNation in 2017 over the use of the phrase Black Friday. It successfully prevented the German company from using the Black Friday trademark while trading in Australia without express licence from the fashion retailer.

Recently, it appears Factory X has been attempting to press a similar licence on retailers, establishing a website under its Black Friday domain which informs retailers that they need permission to use the phrase.

Retailers looking for permission are required to fill in an application form and pay an undisclosed fee, the site says. They are then granted permission for 12 months following their payment.

Some retailers have received infringement letters, according to Donna Patane, an intellectual property specialist with MacDonnells Law. She has been monitoring the case after a number of her retail clients received such notices.

"A letter to one of our clients noted that Factory X is the owner of the registered trademark and alleged that promoting a 'Black Friday' retail sales event on a website was an infringement of the trademark," Ms Patane said.

"The letter then demanded an acknowledgement of infringement, an undertaking to cease and desist and reserved Factory X's rights to recover damages and take further action if the demands were not met including recovering costs."

Both Factory X and Harvey Norman declined to comment, citing the ongoing nature of the case.

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