Don’t Bank Your Reputation On Generic Terms: “COMMUNITY BANK” Removed From Trade Mark Register

By Louise Wolf, Senior Associate and Nicholas Mason, Law Clerk, MST Lawyers

In the recent decision of Community First Credit Union v Bendigo and Adelaide Bank Limited [2019] FCA 1553, the Federal Court allowed an appeal by Community First Credit Union (CFCU) against the refusal of its trademark application for “COMMUNITY FIRST BANK” and “COMMUNITY FIRST MUTUAL BANK”. It also determined that the words “COMMUNITY BANK” registered by Bendigo and Adelaide Bank Limited (Bendigo) be removed from the Trade Marks Register.

Background

Both CFCU and Bendigo carry on the business of providing financial services.  Bendigo has held two trade mark registrations within the financial and insurances class: a composite device mark incorporating a logo and the phrase “community bank” since 1999; and a word mark “COMMUNITY BANK” since 2001.

In 2013, CFCU lodged trade mark applications for “COMMUNITY FIRST BANK” and “COMMUNITY FIRST MUTUAL BANK” (CFCU Marks).  Bendigo successfully opposed the registrations, and the Registrar consequently decided not to register the CFCU Marks. 

CFCU appealed the decision of the Registrar (the appeal proceeding) and also initiated proceedings in the Federal Court to have Bendigo’s “COMMUNITY BANK” mark removed from the register (the rectification proceeding).

The Rectification Proceeding

Under s 88(2)(a) of the Trade Marks Act 1995 (Cth), CFCU sought an order that both Bendigo marks be cancelled and removed from the register.  CFCU contended that the trade marks were not sufficiently distinctive at the time they were filed, in 1999 and 2001. It argued that the phrase “COMMUNITY BANK” was purely descriptive and incapable of distinguishing Bendigo’s services from the services of other financial providers. CFCU saw this lack of distinctiveness as precluding the term “COMMUNITY BANK” from being recognised as a valid trade mark. 

Markovic J agreed with CFCU that, at the relevant times, the ordinary meaning of the words “community” and “bank” were descriptive of the provision of financial services to a group of people unified by a common feature. This feature could include an aspect such as geography, occupation or workplace. Such a descriptor was not exclusive to Bendigo’s franchise banking model.   Furthermore, the use of these terms conjunctively was not seen as so unique as to alter the meanings that each of the words possessed individually.  They remained directly descriptive of the services offered by Bendigo, a finding underscored by early marketing material which clearly indicated a relevant bank branch was connected to the “community bank” service it provided.

For these reasons, her Honour was prepared to order that both the “COMMUNITY BANK” marks be removed from the trade mark register in accordance with s 88.  

The Appeal Proceeding

The Court considered the appeal from the decision of Registrar of Trade Marks not to register CFCU’s “COMMUNITY FIRST BANK” and “COMMUNITY FIRST MUTUAL BANK” marks.

Bendigo first relied on s 60 of the Trade Marks Act.  This section provides that the registration of a trade mark may be opposed on the grounds that:

1. a similar registered mark has acquired a reputation in Australia in respect to the same goods and services; and
2. the use of a subsequeant mark would be likely to deceive or cause confusion.

On balance, Markovic J was not persuaded that Bendigo had acquired a requisite degree of reputation.  Markovic J found that Bendigo had almost always used the “COMMUNITY BANK” mark alongside the separate Bendigo mark which containing a readily identifiable business logo. Therefore, the court was not satisfied that Bendigo had developed a reputation exclusively in relation to the “COMMUNITY BANK” mark.

On a second ground, Bendigo argued that the marks proposed to be registered by CFCU were substantially identical with, or deceptively similar to, its registered trade mark under s 44 of the Trade Marks Act.

Bendigo submitted that the words “community” and “bank” are key features of both marks. This was critical to the overall net impression provided by the mark, in line with a very substantial nationwide reputation associated with the use of “COMMUNITY BANK”. It was argued that a phonetic similarity, alongside a lack of understanding of the technical understanding of “mutual” in technical corporate registration context, was sufficient to render CFCU’s mark as being deceptively similar.

However, Markovic J concluded that there would be no real or tangible danger of deception or confusion occurring from the use of the CFCU marks. The inclusion of the words “first” and “mutual” rendered them sufficiently visually and aurally different to the Bendigo mark. The separation of the words “community” and “bank” was also seen as significant in the CFCU mark to provide an additional point of differentiation. A degree of care, even amongst less sophisticated consumers, would also be exercised when acquiring financial and insurance services to compound the extent of differentiation.

Final Arguments

Bendigo’s two final arguments were also rejected by Markovic J. An argument of non-use according to s 59(a) could not be substantiated on the grounds that CFCU had only made an application to use the marks. The application was prima facie evidence they had an intention to use the trade mark.   A final technical argument that the use of the mark was contrary to law pursuant to s 42(b) because permission to use the word “bank” had not been obtained from the prudential regulator. This argument also failed because the application was simply an intention to use and permission would be acquired following registration.

Accordingly, CFCU’s appeal was successful because Bendigo had failed to make out its opposition.  Both CFCU trade marks were therefore capable of registration.

Lessons To Learn

This case serves as a useful illustration that trade mark holders who register marks involving generic or everyday terms need to adapt their marks to distinguish their services beyond the ordinary signification of the terms.  A failure to do so presents a risk that such a trade mark may be removed from the register, even years later. To mitigate this risk, it is necessary that such a mark develop its reputation without assistance from any accompanying devices.

To those looking to register a mark within a class where the generic terms are already registered, the insertion of a further word or words to disrupt visual and aural likeness may be sufficient to successfully defend an opposition on the grounds of deceptive similarity.

For more information on this matter, please email our Intellectual Property and Trade Marks team or call +61 3 8540 0200.