Bendigo and Adelaide Bank has lost its toehold on the Community Bank trade mark, following a ruling by Justice Brigitte Markovic in the Federal Court on Friday.
One of Sydney's biggest credit unions will be able to brand itself Community First Bank soon.
In a trade mark precedent, Justice Markovic has for now bought to an end a long simmering and barely publicised dispute over the Community Bank Device and COMMUNITY BANK Word Mark controlled for 20 years by Bendigo.
The bank registered these with IP Australia in 1999 and 2001 in the category "Financial services including banking services".?
In 2003 Community First Credit Union lodged two trade mark applications for COMMUNITY FIRST BANK and COMMUNITY FIRST MUTUAL BANK.
In July 2017 a delegate of the Registrar of Trade Marks upheld opposition from Bendigo and, "with reference to the Bendigo Word Mark … found that CFCU did not establish honest concurrent use under s 44(3) or continuous prior use under s 44(4) of the Act.
"The applications for registration of the CFCU Marks were thus rejected," Markovic wrote in her judgment.
Joce (John) Tancevski, the CEO of Community First, informed the court of CFCU's intention to apply to APRA for use of the word "bank" or "mutual bank" in its corporate name, as more than 20 other credit unions have already done, though few have had to cool their heels for more than six years as CFCU have done.
Tancevski's evidence was that CFCU intends to change its status from a credit union to a bank or mutual bank "and that it has always been its intention to continue to use the Community First Registered Mark if and when it becomes a bank or mutual bank," the judge wrote.
He also gave evidence in cross-examination that CFCU would not object to another credit union using the term "community bank"
The ADI, however, will need to clarify it legal name with APRA, which will be either "Community First Bank" or "Community First Mutual Bank".
Efforts by other mutual ADIs to embrace the concept of "community bank" in their branding have met interference from Bendigo over the years, most notably in the case of the entity now trading as G&C Mutual Bank. The former SGE Credit Union had, in 2014, attempted to register "Australian Community Bank". G&C abandoned its own disputes before the registrar three years later, for cost reasons.
In the proceedings, CFCU sought "rectification of the Register by cancellation or removal of each of the Bendigo Community Marks and orders requiring the Registrar to remove the Bendigo Community Marks from the Register."
It succeeded.
Justice Markovic in the end kept things simple.
"When used in combination the words 'community' and 'bank' convey the meaning of the provision of financial services to a group of people brought together by a common feature, for example geography, occupation or workplace," she wrote.
"The use of these terms in conjunction is not so unique as to alter the meanings that community and bank possess individually.
"There is no covert or skilful allusion to the services provided by Bendigo. The combined words are directly descriptive of the services offered, namely the provision of financial services to a community of people defined by geography."