Community First Credit Union
[2015] ATMO 108
•29 October 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application numbers 1541594 (36) and 1541620 (36) - COMMUNITY FIRST MUTUAL BANK and COMMUNITY FIRST BANK- in the name of Community First Credit Union Limited.
| Delegate: | Nicole Worth |
| Representation: | Applicant: Ronen Atzmon of Atzmon & Co Solicitors |
| Decision: | 2015 ATMO 108 Section 38 – ground for rejection under s 42(b) should have been raised – circumstances exist now which make revocation unreasonable – revocation of acceptance refused. |
Background
This decision concerns s 38 of the Trade Marks Act 1995 (Cth) (‘the Act’). It arises from the Registrar’s proposal to revoke the acceptance of two trade mark applications, filed on 1 March 2013 by Community First Credit Union Limited (‘the Applicant’) and detailed below.
| Application No. | 1541594 | 1541620 |
| Trade Mark | COMMUNITY FIRST MUTUAL BANK | COMMUNITY FIRST BANK |
| Services | Class 36: Card operated financial services; Financial services; Provision of information relating to financial services; Advice regarding lending services; Commercial lending; Corporate lending; Lending against securities; Lending on mortgage; Financial advice; Insurance services; Banking services in relation to the electronic transfer of funds; Personal banking services; Investment account services; Savings account services | Class 36: Card operated financial services; Financial services; Banking services in relation to the electronic transfer of funds; Personal banking services; Advice regarding lending services; Commercial lending; Lending against securities; Bank account services; Investment account services; Savings account services; Financial advice; Advice relating to insurance; Insurance services |
| Endorsement | Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. | Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. |
After being filed the applications were examined as required by s 31 of the Act. Grounds for rejection were raised under s 44 of the Act in relation to both applications, and the Applicant filed evidence of use sufficient to satisfy the examiner that the prior continuous use provisions of sub-s 44(4) applied.
Also during examination the examiner identified that the Applicant was listed on the Australian Prudential Regulation Authority’s (‘APRA’) website as an Authorised Deposit-taking Institution (‘ADI’). The examiner did so because, at the time of examination, the Registrar’s practice was that such identification negated the need to raise a ground for rejection under s 42(b) of the Act (that section relating to use of a trade mark which would be contrary to law).
It is the Registrar’s practice to raise a ground for rejection under s 42(b) of the Act against trade marks that contain words the use of which is restricted under the Banking Act 1959 (Cth) (‘the Banking Act’). ‘Bank’ is one of those words. However the ground for rejection will not be raised if the examiner is satisfied that an applicant has APRA’s consent to use the word. At the time of examination, the Registrar’s practice was that an examiner could be satisfied so by checking whether the Applicant appeared on the List of Authorised Deposit-taking Institutions published upon APRA’s website at In the case at hand, the examiner consulted that list, identified that the Applicant appeared upon it, and accordingly did not raise a ground for rejection under s 42(b).
[1] This was reflected in the Trade Marks Office Manual of Practice and Procedure which stated, at the time of examination, ‘A ground for rejection should be raised where a trade mark claiming financial services in class 36 contains a restricted word or expression and the trade mark owner is not on the List of Authorised Deposit-Taking Institutions available on the website of the Australian Prudential Regulatory Authority (APRA)’. (emphasis added).
The applications were accepted for possible registration and advertised as such on 29 January 2015.
On 27 March 2015 a third party requested revocation of the applications on the basis that the evidence filed by the Applicant did not establish prior continuous use of the trade marks applied for. The Registrar declined to revoke acceptance on that occasion.
On 25 May 2015 the Registrar wrote to the Applicant proposing revocation of acceptance for reasons unrelated to the above request. What prompted the revocation proposal is not evident from the file. Nonetheless the revocation proposal stated:
Trade mark application 1541594 was advertised as accepted in the Official Journal of Trade Marks on 29 January 2015. However, it has now come to my attention that the trade mark should not have been accepted.
The approach and practice in relation to Authorised Deposit-taking Institutions (ADI) and ‘BANK’ marks under s42 has been amended. Following a review of the Australian Prudential Regulation Authority’s Guidelines for Implementation of s66 of the Banking Act 1959
( and in consultation with APRA, we have determined that CREDIT UNIONS appearing on the list of ADIs do not have permission to use the word BANK in their trade marks.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).
I have presumed that the Guidelines referred to are the Guidelines. Implementation of Section 66 of the Banking Act 1959. January 2006 (‘the 2006 Guidelines’),[2] a document which appears on APRA’s website and appears to have been in place as at the filing date of the application and as at the date revocation was proposed.
[2] Australian Prudential Regulation Authority, Guidelines. Implementation of Section 66 of the Banking Act 1959. January 2006. <
That proposal also informed the Applicant of its right to be heard which the Applicant exercised. The matter came before me, a delegate of the Registrar of Trade Marks, at a hearing in Canberra on 6 August 2015. The Applicant was represented by Ronen Atzmon of Atzmon & Co Solicitors, who prepared written submissions and spoke at the hearing on the Applicant’s behalf.
Section 38
Section 38 of the Act provides for revocation of acceptance and is reproduced below:
38 Revocation of acceptance
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b)it is reasonable to revoke the acceptance, taking account of all the circumstances.
(2) If the Registrar revokes the acceptance:
(a)the application is taken to have never been accepted; and
(b)the Registrar must examine, and report on, the application as necessary under section 31; and
(c)sections 33 and 34 again apply in relation to the application.
The decision to revoke acceptance is therefore reliant upon two factors, broadly being that the trade mark in question should not have been accepted and that it is reasonable to now revoke acceptance, taking into account the circumstances existing at the relevant times.
The purpose of s 38 is to remedy acceptances that have been made in error. If the error is realised before a trade mark proceeds to registration, the Registrar has the power to revoke the acceptance and examine the trade mark once again, thus providing a simple procedure for remedying deficiencies in a trade mark before it proceeds to registration. The effect of revocation under s 38 is that the application is taken to have never been accepted, the application is returned to the examination phase of the application process, and there is no provision for an appeal (noted in 1-800-Flowers.Com, Inc v Registrar of Trade Marks[3] and reiterated in FPInnovation Pty Ltd v Registrar of Trade Marks[4]).
[3] [2012] FCA 209; (2012) 201 FCR 488.
[4] [2013] FCA 826.
Section 38(1)(a)
The first limb of s 38 is a consideration of whether the trade marks should not have been accepted, taking into account all of the circumstances that existed at that time. In order to answer this question it is necessary to have regard to the relevant provisions of s 42 of the Act and s 66 of the Banking Act, upon which the proposal for revocation was based.[5]
[5] I note that the revocation proposal does not expressly state that a ground for rejection under s 42 exists, however I consider it implied by the identification of an amendment to ‘The approach and practice in relation to Authorised Deposit-taking Institutions (ADI) and ‘BANK’ marks under s42’.
Section 42(b)
Section 42 of the Act relevantly provides that:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.The law(s) to which use would be contrary are not restricted. Additionally, the threshold is that the use would, not could, be contrary to law.[6]
[6] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [26]-[28].
Section 66 of the Banking Act is identified as the law to which use of the trade marks would be contrary, which relevantly provides:
66 Restriction on use of certain words and expressions
(1) A person is guilty of an offence if:
(a) the person carries on a financial business, whether or not in Australia; and
(b) the person assumes or uses, in Australia, a restricted word or expression in relation to that financial business; and
(c) neither subsection (1AB) nor subsection (1AC) allows that assumption or use of that word or expression’ and
(d) APRA did not consent to that assumption or use of that word or expression; and
(e) there is no determination in force under section 11 that this subsection does not apply to the person.
…(1B) A consent may be expressed to apply to a particular person or to persons included in a class of persons.
(2) APRA may, at any time:(a) impose conditions, or additional conditions, on a consent; or
(b) vary or revoke conditions imposed on a consent; or
(c) revoke a consent.
…
(4) In this section:
(a) a reference to a restricted word or expression is a reference to:
(i) the word bank, banker or banking; or
(ii) the expression building society, credit union or credit society; or
(iii) any other word or expression specified in a determination in force under subsection (5); or
(iv) any other word or expression (whether or not in English) that is of like import to a word or expression covered by any of the previous subparagraphs; and(b) a reference to a word or expression being assumed or used includes a reference to the word or expression being assumed or used:
(i) as part of another word or expression; or
(ii) in combination with other words, letters or other symbols; and
(c) a reference to a financial business is a reference to a business that:
(i) consists of, or includes, the provision of financial services; or
(ii) relates, in whole or in part, to the provision of financial services.
As can be seen from the above provisions a person is guilty of an offence under the Banking Act if the person carries on a financial business and, inter alia, assumes or uses the word ‘bank’ without the consent of APRA. Accordingly, a potential ground for rejection exists under s 42(b) of the Act where a person applies to register a trade mark containing the word ‘bank’ in respect of financial services and it is not apparent that APRA has given consent to the person to use the word.
As previously indicated APRA publishes guidelines regarding the implementation of s 66 of the Banking Act. As at the filing date of the application, the published guidelines were the 2006 Guidelines.[7] They provided that ADIs listed upon the APRA website as banks had unrestricted consent to use the words ‘bank’, ‘banker’ and ‘banking’. They also provided that ADIs listed upon the APRA website as credit unions or building societies may use the word ‘banking’ in relation to their banking activities.
[7] I note that as at the date revocation was proposed, draft ‘April 2013’ Guidelines had been published for comment and the Guidelines now in place are Guidelines. Implementation of section 66 of the Banking Act 1959. August 2015.
Included in the examination file is a contemporaneous copy of the List of Authorised Deposit-taking Institutions that appeared upon APRA’s website. It states that ‘The institutions listed on this page are regulated by APRA in accordance with the Banking Act 1959’. It is divided into several categories including ‘Australian-owned Banks’, ‘Foreign Subsidiary Banks’, ‘Branches of Foreign Banks’, ‘Building Societies’ and ‘Credit Unions’. The Applicant’s name appears under the category ‘Credit Unions’, but not under any of the categories identifying banks. Accordingly, whilst the Applicant was permitted to use the word ‘banking’ in relation to its banking activities, it was not listed as one of the ADIs that had unrestricted consent to use the word ‘bank’.
Given this, and the fact that the Applicant did not provide any evidence of having received individual consent from APRA when it filed the applications, it appears that the Applicant did not have consent to use the word ‘bank’ either when it filed the applications or when the applications were accepted. The Applicant concedes as much in its written submissions.
It is not clear why, at the time, the Registrar’s practice relied only upon the identification of an applicant in the List of Authorised Deposit-taking Institutions upon APRA’s website, rather than upon the identification of an applicant as a bank in that list (as the 2006 Guidelines suggested it must). It is possible that, this being an area outside of the Registrar’s expertise, the Registrar was not aware of the 2006 Guidelines and/or the Registrar relied upon the statement that ‘The institutions listed on this page are regulated by APRA in accordance with the Banking Act 1959’ as an indication of APRA’s governance of those institutions’ use of any restricted words. In any event, it appears that the Registrar’s practice did not reflect the implementation of s 66 of the Banking Act, and that a ground for rejection under s 42(b) of the Act did in fact exist. Although this circumstance was not known by the Registrar at the time the applications were accepted, s 38(1)(a) specifically recognises that it is circumstances both known and unknown that are to be taken into account.
Accordingly, I am satisfied that the Applicant’s trade marks should not have been accepted and the first limb of s 38 is met. That, however, is not the end of the enquiry and I turn to a consideration of the second limb of s 38.
Section 38(1)(b)
Section 38(1)(b) provides that, if the application should not have been accepted, the Registrar may revoke acceptance only if satisfied that it is reasonable to do so, taking account of all of the circumstances.
There are no bounds as to what the Registrar may take into account. Examples of circumstances wherein revocation has been found not to be reasonable include:
·A ground not routinely analysed during examination and relevant to the matter would need full adversarial testing, and evidentiary stages were significantly underway;[8]
·Evidence sufficient to satisfy the Registrar in terms of sub-ss 41(5) or 41(4) was filed after acceptance;[9]
·Although prior conflicting marks should have been raised during examination, they related to complex issues of ownership over intellectual property rights which could be more effectively canvassed at an opposition hearing.[10]
[8] Grieve v Notaras [2010] ATMO 12.
[9] Re Strandbags Group Pty Ltd [2011] ATMO 30; Abalner Pty Ltd [2015] ATMO 51.
[10] Cooley Investments Pty Ltd [2011] ATMO 7.
These examples are merely illustrative. It is for me to decide, as the delegate to whom determination of the matter has been assigned, whether revocation is appropriate according to the merits of the case at hand.
The Applicant filed evidence of use of the trade marks in response to the ground for rejection under section 44, raised during examination. That evidence indicates that the Applicant is a well-established entity in the financial services sector that has been trading as a banking institution since 1959, under the name COMMUNITY FIRST since at least 1993.
In submissions at the hearing the Applicant explained that it has contemplated changes to its structure (which it evidenced by way of a number of non-public and/or confidential documents) and that the trade mark applications were made as preliminary and preparatory steps towards preserving the relevant names.
Of particular relevance is a copy of a letter from APRA written to the Chief Executive Officer of the Applicant. The letter is dated 15 July 2015 and was written in response to the Chief Executive Officer’s request for approval under s 66 of the Banking Act for use of the restricted word ‘bank’. It states:
This letter confirms that APRA has no objection to you registering the following proposed names with IP Australia:
·Community First Bank; and
·Community First Mutual Bank (CFCU Proposed Names)
This position is taken on the understanding that none of the CFCU Proposed Names should be used for any commercial purpose until APRA has consented to their use under section 66 of the [Banking] Act.
The letter does not form part of a declaration, but rather forms part of exhibits referred to in the Applicant’s submissions. Nonetheless, there is nothing that causes me to doubt the veracity of the letter. The Registrar is not bound by the rules of evidence[11] and in the context of the ex parte proceedings here, I give the letter full weight.
[11] See regulation 21.14(4) of the Trade Marks Regulations 1995.
I consider that the letter from APRA, whilst perhaps not equating to consent to use the word ‘bank’ in the sense contemplated by s 66 of the Banking Act, does indicate that APRA has no objection to the registration of the applied-for trade marks. The position taken by APRA has significant bearing, given it is the governing body for issues relating to the Banking Act. It appears also that APRA has anticipated that entities similar to the Applicant will wish to consider similar changes in their structure. The updated Guidelines of August 2015 provide that where an ADI operating as a credit union or building society holds at least $50 million in Tier 1 capital[12] and wishes to operate as a bank, the ADI may apply to APRA for consent to unconditionally use ‘bank’, ‘banker’ and ‘banking’, which APRA will consider on a case-by-case basis.[13] That APRA has indicated it has no objection to such a credit union registering trade marks containing the restricted word ‘bank’, prior to obtaining consent, is a circumstance relevant to the consideration of whether it is reasonable to revoke acceptance.
[12] ‘Tier 1 capital consists of the funding sources to which a bank can most freely allocate losses without triggering bankruptcy. This includes, for example, ordinary shares and retained earnings, which make up most of the Tier 1 capital held by Australian banks…’ Gorajek, A and Turner, G. Australian Bank Capital and the Regulatory Framework. Reserve Bank of Australia Bulletin. September Quarter 2010.
[13] I note that the updated guidelines also state that such ADIs will not be permitted to continue to use expressions including ‘credit union’ if they wish to operate as a bank with unrestricted use of the words ‘bank’, ‘banker’ or ‘banking’.
I note further that opposition proceedings are afoot (although in only the early stages). It would appear to be an unwarranted delay in dealing with the opposition matter to return the applications to examination, on the basis of contrariness to law which the relevant governing body itself does not take issue with (or, at least, does not take issue with in terms of registering trade marks).
Decision
Taking into account all of the circumstances, I am not satisfied that it is reasonable to revoke acceptance.
I refuse to revoke acceptance of trade mark applications 1541594 and 1541620.
Nicole Worth
Hearings Officer
Trade Marks Hearings
29 October 2015
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