Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31

Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31

Bendigo's marks 'Community Bank' were not inherently adapted to distinguish its services and were directly descriptive; insufficient trade mark use before filing to confer distinctiveness; other traders legitimately desired to use the term. The marks must be removed from the Register. CFCU's marks were not deceptively similar to Bendigo's marks, had not acquired sufficient reputation, and registration was not contrary to law. Appeal and leave to appeal dismissed.

Jurisdiction
Australia
Judgment Date
11 March 2021
Procedural Posture
Appeal and Application for Leave to Appeal / Judgment After Appeal and Leave Application
Outcome
Appeal dismissed; application for leave to appeal refused
Legal Topics
['trade Marks' 'register Rectification' 'distinctiveness' 'non Use' 'opposition' 'deceptive Similarity' 'reputation' 'contrary to Law']
['intellectual Property'] ['trade Marks' 'register Rectification' 'distinctiveness' 'non Use' 'opposition' 'deceptive Similarity' 'reputation' 'contrary to Law']

Case Brief

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Procedural Posture

Appeal and Application for Leave to Appeal / Judgment After Appeal and Leave Application

Legal Issues

  1. 1 ["Whether Bendigo's 'Community Bank' trade marks were inherently adapted to distinguish services under s 41 of Trade Marks Act 1995 (Cth)" 'Whether registration could be opposed under ss 41 or 59 (absence of intention to use) of the Trade Marks Act 1995 (Cth)' 'Whether marks should be removed from the Register for non-use under s 92(4)' 'Whether the CFCU marks could be opposed under ss 42(b), 44(2), or 60 of the Act on grounds of deceptive similarity, reputation, or being contrary to law']

Ratio Decidendi

Bendigo's marks 'Community Bank' were not inherently adapted to distinguish its services and were directly descriptive; insufficient trade mark use before filing to confer distinctiveness; other traders legitimately desired to use the term. The marks must be removed from the Register. CFCU's marks were not deceptively similar to Bendigo's marks, had not acquired sufficient reputation, and registration was not contrary to law. Appeal and leave to appeal dismissed.

Court Disposition

Appeal dismissed; application for leave to appeal refused

Orders

  • ['The parties confer and within 14 days file an agreed minute of orders (including as to costs) reflecting the reasons, or in default, written submissions (no longer than 5 pages) and proposed minutes of orders']