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)).
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.
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:
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 skillful 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.
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:
Markovic J, refused to exercise a discretion under s88(1) not to remove the mark, noting:
CFCU was successful in the appeal against the refusal of registration of COMMUNITY FIRST BANK and COMMUNITY FIRST MUTUAL BANK where it was found:
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.
Prior to seeking registration of a trade mark, businesses should seek advice from a trade mark attorney to develop an appropriate strategy regarding selection and use to maximize prospects for obtaining and preserving enforceable rights in the face of third party use.
The decisions have been appealed by Bendigo Bank to the Full Court of the Federal Court.