Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31
The Full Federal Court has upheld the primary judge’s decision that Bendigo and Adelaide Bank Limited could no longer hold its monopoly of more than 20 years over the words “community bank”.
The decision emphasises the difficulties in enforcing and monopolising descriptive marks, even after they are registered. It also provides useful discussion on “ordinary signification” in the assessment of whether marks are inherently adapted to distinguish and use as a trade mark for the purpose of showing factual distinctiveness.
Background
Bendigo and Adelaide Bank Limited (“Bendigo”) owned Registration No. 784796 for the mark:
dated 8 February 1999 and Registration No. 887023 for the plain script mark “COMMUNITY BANK” dated 24 August 2001 (collectively “the Bendigo Community marks”).
Bendigo also owned Registration No. 746687
dated 21 October 1997 (“Bendigo Composite mark”).
All of Bendigo’s registrations covered various banking and financial services in Class 36.
On 1 March 2013 Community First Credit Union Limited (“Community First”) applied to register two marks which included “community” and “bank” under Application No.1541620 COMMUNITY FIRST BANK and 1541594 COMMUNITY FIRST MUTUAL BANK (the “CFCU Marks”) covering Class 36 services, including financial services and personal banking services.
Bendigo successfully opposed both of Community First’s applications under s 44 of the Trade Marks Act 1995 (Cth) on the basis of Bendigo’s earlier registration for COMMUNITY BANK.
Community First then appealed the opposition decision and sought rectification of Bendigo’s registrations for the Bendigo Community marks under s 88(2)(a) on the basis that they could have been opposed under s 41 because they were not sufficiently distinctive at the priority dates.
Primary decision
In summary, the primary judge held that:
- the Bendigo Community marks were not to any extent inherently adapted to distinguish the services for the purpose of s 41(3) and that the extent of use was not sufficient to show that the marks were distinctive in fact as at the priority dates for the purpose of s 41(6) and the registrations should therefore be rectified on the basis of s 41; and
- Bendigo’s opposition to Community First’s applications should be set aside as none of the opposition grounds under ss 42(b), 44, 58A, 59 and 60 were met and the CFCU marks should proceed to registration.
Appeal decision
Bendigo appealed the primary judge’s decision to rectify the Bendigo Community marks under the s 41 ground and sought leave to appeal the opposition decision, but was unsuccessful. The main points from the Full Court’s decision are discussed below.
- Section 41(3) – Inherently adapted to distinguish
Bendigo argued that the primary judge erred in finding the Bendigo Community marks not to any extent inherently adapted to distinguish.
On the issue of inherent distinctiveness, the primary judge had found the ordinary signification of the term “community bank” to be “a provider of banking services or financial institution that serves a particular community, whether defined by geography, workplace, trade or other feature” and directly descriptive of the services. [1]
Bendigo argued that “community bank” had a number of possible meanings in the context of the services and, as such, would have no one ordinary meaning or signification. The appeal judges said that there is no basis for limiting section 41 to prevent only appropriation of words and phrases with one singular meaning. Justices Middleton and Burley noted “the existence of more than one possible meaning does not mean that a term is not capable of ordinary signification”. [2]
Bendigo also argued that the ordinary meaning of “community bank” was not the one found by the primary judge, but a reference to its unique franchise model, where local businesses operated local branches of the “Bendigo bank” under franchise. However, the appeal judges agreed with the primary judge that “Community Bank” was used for its ordinary signification “that is, to convey the meaning of providing banking services to a particular community”. [3] Justices Middleton and Burley held that “notwithstanding the originality of the model, or any originality in use of the term to refer to the model, the term was used in a way that was consistent with its natural English meaning (or at least the natural English meaning of the individual words “community” and “bank”)”. [4]
- Section 41(6) – factual distinctiveness
Bendigo also argued that the primary judge erred in finding that use of the Bendigo Community marks was not sufficient to establish distinctiveness under s 41(6).
The question to be addressed was summarised by Justices Burley and Middleton as “whether, objectively, the term “community bank” was used to distinguish the services”. Their Honours also noted that the uses must be as a trade mark. [5]
In most cases, the words “community bank” were used in the signage and promotional materials in close association with the B logo and the words “Bendigo Bank” in the format:
or with the B logo or other Bendigo bank indicia. The primary judge had considered that these uses emphasised “Bendigo Bank” and the B logo as the brand and diluted any brand significance in the words “Community Bank”.
While the primary judge had recognised that there can be double trade mark use, she had found it “unlikely, if not impossible” that an ordinary consumer viewing the “Community Bank” mark in isolation of the B logo, the “Bendigo Bank” mark or other Bendigo indicia would associate the services with Bendigo. [6]
The appeal judges agreed and found that the primary judge had made no error. Justices Middleton and Burley found that the words “community bank” were not used as a brand. Rather, it was the Bendigo branding that was used to distinguish the services and indicate the connection with Bendigo. [7]
There had been some use of “Community Bank” alone, or at a distance from Bendigo’s other marks and indicia. However, the appeal judges agreed with the primary judge that this use was very limited and did not show use of “Community Bank” in a trade mark sense sufficient to establish distinctiveness or use in relation to the relevant services.
- Opposition
In relation to the opposition proceedings, Bendigo sought leave to appeal the primary judge’s decision in relation to ss 60, 42(b) and 44.
The appeal judges upheld the primary judge’s decision on the basis that Bendigo did not have sufficient reputation in “Community Bank” to succeed in opposition under ss 60 and 42(b) and that opposition under s 44 could not succeed because Bendigo’s registrations for the Bendigo Community marks were to be cancelled.
Takeaways
Even when descriptive marks are registered, there may be difficulties maintaining and enforcing exclusive rights.
Owners of descriptive, or somewhat descriptive, trade marks should ensure that they are used in a manner which clearly indicates that they are a trade mark rather than a description, and separate from other more distinctive marks.
Trade mark owners are advised that registrations for marks which have no descriptive significance are more readily protectable, and generally grant the strongest enforceable rights.
[1] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, pgh 21.
[2] ibid, pgh 107.
[3] ibid, pgh 87.
[4] ibid, pgh 98.
[5] ibid, pgh 151.
[6] ibid, pgh 155.
[7] ibid, pgh 159.