Descriptive trade marks: can David, Goliath and all their mates now use “community bank”?
Lara Gun, Senior Associate, FB Rice
In rectification proceedings, the Federal Court of Australia recently allowed cancellation of a registration for “COMMUNITY BANK” under s88 of the Trade Marks Act 1995 on the basis that it was entirely descriptive of banking services. The proceedings were filed in conjunction with an appeal by Community First Credit Union (CFCU) on a decision by a delegate of the Registrar of Trade Marks to refuse registration of its marks COMMUNITY FIRST BANK and COMMUNITY FIRST MUTUAL BANK (CFCU Marks) due to similarity with Bendigo and Adelaide Bank Limited’s (Bendigo Bank) registration for COMMUNITY BANK.
CFCU is the owner of registration 776512 COMMUNITY FIRST with a priority date of 23 October 1998 for “insurance and financial services; services of credit unions; banking services; real estate financial services” in Class 36.
Bendigo, a publicly listed bank, is the owner of registrations 784796 (Bendigo & Device) and 887023 COMMUNITY BANK (Bendigo Word Mark) in Class 36, for various financial and banking services with priority dates of 8 February 1999 and 24 August 2001. The Bendigo Word Mark was accepted under s41(5), (now s41(4)), namely, that as a result of evidence of use, it was considered inherently adapted to distinguish Bendigo’s services from those of other traders.
In 2013, CFCU applied to register COMMUNITY FIRST BANK and COMMUNITY FIRST MUTUAL BANK in Class 36 for, inter alia, financial and banking services. The CFCU Marks were accepted in January 2015 on the basis of prior continuous use provisions of s44(4).
Bendigo opposed the CFCU Marks on various grounds but succeeded on the basis of s44(2), being the similarity of the CFCU Marks with Bendigo’s Word Mark and that CFCU did not establish honest concurrent use or “other circumstances” (s44(3)) or prior continuous use (s44(4)).
Appeal and rectification proceedings
CFCU appealed the decision in the Federal Court, and, simultaneously, filed proceedings for an order under s88(1) for cancellation of the Bendigo Marks and for orders under ss97 or 101 to remove the Bendigo Marks.
- s88(1): provides that a court may, upon the application of an aggrieved party order the rectification of the Register by, amongst other things, cancelling or removing a trade mark registration or removing an entry wrongly made or remaining on the Register, subject to a discretion of the court not to remove or cancel the registration
- s88(2): provides that such an application can be made on any of the grounds upon which the registration could have been opposed (s88(2)(a)); because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion (s88(2)(c)).
s41: Distinctiveness COMMUNITY BANK
CFCU was successful on the opposition ground that COMMUNITY BANK was not capable of distinguishing. Applying the two stage test in Clark Equipment Company v Registrar of the Trade Marks  111 CLR 511 (at 514) a determination was made about:
(i) the ordinary signification of the phrase “COMMUNITY BANK” to persons who will purchase, consume or trade in the goods/services – whether the word is directly descriptive or involves a covert and skilful allusion to the relevant goods/services; and
(ii) whether other traders would have a legitimate desire to use COMMUNITY BANK for descriptive purposes for the same/similar goods or services.
Ordinary meaning of the words
CFCU referred to a 2003 edition of the Macquarie Dictionary which defined “community bank” as a generic term, being “a bank which is owned and managed locally and which serves the needs of the local community.”
Markovic J decided, as at the priority date, the phrase “COMMUNITY BANK” had an ordinary meaning that was directly descriptive of the services and was not a “covert or skilful allusion” to the character or quality of the designated services. Under s41(3) due to the ordinary signification of the term “community bank” as a provider of banking services or a financial institution that services a particular community, whether defined by geography, workplace, trader or other feature, is directly descriptive.
Use by other traders?
While there was only limited use of the phrase COMMUNITY BANK by other traders as at the priority dates of the Bendigo Marks, Markovic J considered:
- There was significant evidence of other traders wanting to make legitimate use the phrase “community bank” after the priority dates;
- There were many failed attempts to register COMMUNITY BANK formative marks by other traders, but it was understandable that third parties might prefer to abandon the process to avoid a costly legal dispute;
- There was evidence that other traders were not driven by any desire to trade off any reputation Bendigo may have had in its mark. CFCU and others had no intention to stop Bendigo using “community bank” as a descriptor and no desire to stop it using its registered Bendigo & Device Mark. It was clear that CFCU and others only wanted to end Bendigo’s monopoly on an entirely descriptive phase; and
- Use by Bendigo of it marks, was predominantly as a Composite Mark (combined with “B” Bendigo Device, Bendigo, Bendigo Bank or in close proximity to it) so it could not be concluded that COMMUNITY BANK on its own had become distinctive of its services as at the priority date.
Discretion not to order rectification
Markovic J, refused to exercise a discretion under s88(1) not to remove the mark, noting:
- The absence of any challenge to the Bendigo Marks for 20 years was explainable due to hard fought litigation and associated costs.
- While Bendigo had invested significant resources into its brand and franchises, it had not established that it was by reference to the Bendigo Community Bank Marks alone that it had built the Bendigo community bank franchisees business.
- There was no objection to continued use of the term “community bank” by Bendigo in a descriptive manner and no application to remove a “Bendigo Bank Community Bank Branch” mark.
- The public interest in ensuring registrations which are not valid should not be maintained.
CFCU was successful in the appeal against the refusal of registration of COMMUNITY FIRST BANK and COMMUNITY FIRST MUTUAL BANK where it was found:
- s60 (reputation): much of Bendigo’s use was of a Composite Mark, the Bendigo Word Mark combined with a BENDIGO or Bendigo’s “B” Device; a number of newspaper articles used community bank descriptively; and Bendigo did not have a substantial reputation in the Bendigo Word Mark at the priority date of the CFCU Marks.
- s44: (similar prior mark) there was no real risk of deception or confusion from use of the CFCU Marks. The words FIRST and MUTUAL respectively in the COMMUNITY FIRST BANK and COMMUNITY FIRST MUTUAL BANK marks was sufficient to render the marks aurally and visually distinguishable from COMMUNITY BANK. The common word “COMMUNITY” was not highly distinctive and “BANK” was descriptive.
Take away points
Businesses should be wary of selecting a trade mark with an ordinary meaning that other traders may wish to use to describe their similar goods or services. The decision highlights the need for owners of registered marks to review the manner of use of those marks to ensure registrations are not vulnerable to attack and will support opposition proceedings.
The decisions have been appealed by Bendigo Bank to the Full Court of the Federal Court.
Author: Lara Gun, Senior Associate, FB Rice