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Don’t Bank on Descriptive Terms: the end of Bendigo’s ‘Community Bank’ Monopoly

Nearly twenty years after registering a trade mark for the words ‘community bank’, Bendigo and Adelaide Bank Ltd has lost its monopoly over that term. Last Thursday’s decision by the Full Court of the Federal Court of Australia in Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd [2021] FCAFC 31 is discussed below.

Summary 

The Full Court of the Federal Court of Australia has dismissed an appeal and application for leave to appeal from Community First Credit Union Ltd v Bendigo and Adelaide Bank Ltd [2019] FCA 1553. For two decades Bendigo and Adelaide Bank Ltd (Bendigo) has held a registered trade mark for the words ‘community bank’ and has used that trade mark to obtain injunctive relief to stop any bank using the words in their name or marketing materials, effecting a monopoly on the terminology. In 2017, Community First Credit Union Ltd (CFCU) brought an application seeking cancellation of Bendigo’s registered trade marks under s 88(2)(a) of the Trade Marks Act 1995 (Cth) (TM Act). In its decision on 11 March 2021, the Federal Court reaffirmed the findings of the primary judge, ordering that Bendigo’s trade marks be removed from the Trade Marks Register and CFCU finally be able to register the words ‘community bank’ in their name. 

Background 

The appellant and applicant, Bendigo, owned three trade marks that used the words ‘community bank’ - the ‘Bendigo Device Mark’ and a plain text mark for the words COMMUNITY BANK (collectively called the ‘Bendigo Community Marks’), plus a composite mark including the words ‘Bendigo Bank Community Bank Branch’ (known as the ‘Bendigo Composite Mark’). Problems arose when the respondent, CFCU, sought to register two trade marks which each used the words ‘community’ and ‘bank.’

In April 2016, Bendigo opposed the registration of the CFCU trade marks on the basis of s 44 of the  TM Act. This was allowed by the Registrar of Trade Marks (Registrar) in July 2017. One month later, CFCU appealed the Registrar’s decision (Opposition Proceeding). On the same day, CFCU brought an application under s 88(1) seeking orders that the Register of Trade Marks (Register) be rectified by cancelling and removing the Bendigo Community Marks (Rectification Proceeding).

The primary judge found in favour of CFCU in both the Opposition Proceeding and the Rectification Proceeding, cancelling the registration of the Bendigo Community Marks and allowing CFCU’s trade marks to proceed to registration. In November 2019, Bendigo filed a notice of appeal in relation to the Rectification Proceeding relating to the ground raised under s 41. Bendigo also applied for leave pursuant to s 195(2) to appeal part of the primary judge’s decision in the Opposition Proceeding, arguing that the primary judge erred in her conclusion that the grounds of opposition to the CFCU trade marks under ss 60, 44 and 42(b) should be dismissed.

Key Findings 

Appeal to Rectification Proceeding 

Bendigo brought forward six grounds of appeal arguing that the primary judge erred in finding that the words ‘community bank’ were not ‘inherently adapted to distinguish’ Bendigo’s designated services from the services of other persons pursuant to s 41(3).

The FCAFC dismissed all six grounds, holding:

  1. Bendigo sought to characterise community bank as having so many meanings that there is no ordinary meaning. The ambiguity in the term ‘community bank’ is chiefly directed at how one might define a community. However, the primary judge already stated that a community might be defined by any single common feature. The Court therefore did not wish to unduly restrict the operation of the TM Act by providing protections only to words and phrases that ‘possess a singular meaning in one context.’
  2. Bendigo further argued that ‘community bank’ has no ordinary meaning due to restricted use of the term bank and lack of use of the term in Australia. However, the Court found there was evidence of the term ‘community bank’ being used descriptively, not as a trade mark, including by Bendigo.
  3. In the alternative to ‘community bank’ having no ordinary meaning at all, Bendigo argued that a different ordinary signification should be found. The Court found that any use of the term ‘community bank’ was not a reference to a franchise banking model that Bendigo had created. Rather, Bendigo used the term ‘community bank’ for its ordinary signification – providing banking services to a particular community.

A further six grounds brought forward by Bendigo argued that they had used the trade marks before the filing date of its applications to an extent which distinguished their services as being those of Bendigo under s 41(6).

The FCAFC similarly dismissed all six grounds, finding: 

  1. The term ‘community bank’ in conjunction with or in close proximity to the separate ‘B Bendigo Mark’ or other Bendigo branding was not use of the Bendigo Word Mark. While there may be double trade mark use, this was not the nature of Bendigo’s use of the term ‘community bank’ alongside the other marks. The words ‘community bank’ were presented in a setting where they would not have appeared to the viewer as possessing the character of a brand.
  2. There was insufficient evidence of use of the Bendigo Word Mark on its own so as to distinguish the services.

Application for Leave to Appeal Opposition Proceedings

Bendigo brought four grounds of appeal in relation to s 60. The FCAFC dismissed all four grounds, holding that the Bendigo Word Mark had not acquired a sufficient reputation as a trade mark in Australia for registration of the CFCU to engage s 60(1)(a). Accordingly, a further ground to appeal under s 42 for finding that CFCU trade marks would be contrary to misleading or deceptive conduct under s 18 and s 29 of the Australian Consumer Law was also dismissed. Finally, it was not necessary for the Court to consider the final ground of appeal pursuant to s 44(3)(b) to refuse registration of the CFCU trade marks as it would cause confusion under s 60(1)(b) due to its similarity to the Bendigo Word Mark. This is because the Court upheld the primary judge’s conclusion in the Rectification Proceeding that the Bendigo Word Mark should be removed from the Register.

Implications 

The decision illustrates challenges associated with securing monopoly rights in relation to descriptive terms such as ‘community bank.’ If obtaining monopoly rights to a brand are strategically important, it is therefore preferable to adopt a unique and ‘distinctive’ trade mark in the first instance. Alternatively, if a descriptive term has been adopted as a key business brand, the business will need to use that descriptive term in such a way that the term takes on a significance beyond its ordinary meaning. Failure to do so can result in expensive and time-consuming legal disputes when attempting to enforce the right, as well as a risk that the trade mark may be removed from the Register.
 


Should you require legal advice in relation to IP protection and enforcement strategies, contact Hamilton Locke Partners Sarah Gilkes (IP and Technology) and Eric Braun (Litigation and Dispute Resolution).