Bendigo and Adelaide Bank Limited v Community First Credit Union Limited

Bendigo and Adelaide Bank Limited, the appellant, sought to appeal against a decision of a judge of the Federal Court of Australia that rectified the Register of Trade Marks to cancel the registration of Bendigo’s trade marks that used the words “community bank” and to refuse an application by Community First Credit Union Limited, the respondent, to register trade marks that used the same words. The judge had found that the words “community bank” did not have an ordinary signification that was capable of distinguishing Bendigo’s services from those of others, and that the marks were not distinctive in relation to the services provided by Bendigo. Bendigo also sought leave to appeal on the basis that the judge had erred in finding that certain grounds for opposing the registration of the respondent’s trade marks had not been established. The primary issues for the court were whether the words “community bank” had an ordinary signification that was capable of distinguishing Bendigo’s services from those of others, and whether the Bendigo Community Marks were distinctive in relation to the services provided by Bendigo. The court found that the judge had not erred in finding that the words “community bank” had an ordinary signification that was capable of distinguishing Bendigo’s services from those of others, and that the Bendigo Community Marks were not distinctive in relation to the services provided by Bendigo. The court also found that Bendigo had not established any ground for opposing the registration of the respondent’s trade marks. The appeal was dismissed, and leave to appeal was refused.

The court noted that the Full Court had recently held in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd that a finding that a “word” mark is not to any extent inherently adapted to distinguish a trader’s goods or services means that the word, in relation to those goods or services, serves a purely descriptive function. The court found that the judge had correctly applied this principle in finding that the Bendigo Community Marks were not distinctive in relation to the services provided by Bendigo. The court also found that the judge had correctly rejected Bendigo’s arguments that the words “community bank” had no ordinary meaning, and that the Bendigo Community Marks were inherently adapted to distinguish Bendigo’s services from those of others. The court noted that Bendigo’s arguments were based on the assumption that the Bendigo Community Marks were inherently distinctive, which the judge had correctly found they were not. The court found that Bendigo had not established any ground for opposing the registration of the respondent’s trade marks, as the judge had found that the Bendigo Community Marks were not distinctive in relation to the services provided by Bendigo, and that the respondent’s trade marks were not likely to cause confusion or deception in the relevant public. The appeal was dismissed, and leave to appeal was refused.