Community First Credit Union has successfully challenged Bendigo and Adelaide Bank’s right to trademark the words “community bank”, with the Federal Court ruling the bank cannot prevent others from using the term in their branding.
Bendigo and Adelaide registered a trade mark over the words in 1999. In all it registered three trade marks that used the words “community bank”.
In 2013, Community First Credit Union sought to register the words “community first bank” and “community first mutual bank” for its own services but its applications were blocked by Bendigo and Adelaide’s prior registration of “community bank”.
In 2017, the Registrar of Trade Marks supported Bendigo and Adelaide’s opposition to Community First’s registration and decided that the credit union’s proposed trade marks would be refused registration.
Community First took the matter to court, challenging the validity of Bendigo and Adelaide’s registrations. It argued that “community bank” is directly descriptive of the services provided by the bank and therefore ineligible for registration under the Trade Marks Act 1959.
In a ruling handed down last October, the primary judge in the Federal Court ruled that the words were “inherently incapable of distinguishing the bank’s services from those of others and were therefore invalid for registration as trade marks.”
On appeal, the full court backed up this ruling in a judgment handed down last month.
It said: “An application for the registration of a trade mark must be rejected if the mark is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons.”
Bendigo and Adelaide argued that use of the term “community bank” had become distinctive of its services when it applied for its trade mark registrations.
The court ruled that there was insufficient evidence of this and the words “had not acquired their own distinctiveness through use”.
It found that the term “community bank” usually appeared in signage and promotional material alongside the Bendigo name and logo, “making it difficult to conclude that ‘community bank’ alone had become distinctive of the services”.
In fact, use of the term “community bank” alongside the Bendigo logo and name “had the effect of substantially diluting any trade mark significance that may attach to the words ‘community bank’ by themselves”.
It said: “The words ‘community bank’ were presented in a setting where those words would not have appeared to the viewer as possessing the character of a brand for the purposes of indicating a connection in the course of trade. That connection was instead accomplished by the Bendigo branding.”
As a result, the bank’s registrations of “community bank” have been cancelled and removed from the Register of Trade Marks. It can continue to use “community bank” but it cannot prevent others from doing so.