Bendigo and Adelaide Bank Limited v Community First Credit Union Limited

• Jurisdiction: Australia Federal only
• Judgment Date: 11 March 2021
• Neutral Citation: [2021] FCAFC 31
• Date: 11 March 2021
• Court: Full Federal Court (Australia)

FEDERAL COURT OF AUSTRALIA

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

Appeal from:	Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553
File numbers:	NSD 1956 of 2019NSD 1963 of 2019
Judgment of:	MIDDLETON, BURLEY AND THAWLEY JJ
Date of judgment:	11 March 2021
Catchwords:	TRADE MARKS – appeal from decision to rectify the Register of Trade Marks pursuant to s 88(1) of the Trade Marks Act 1995 (Cth) – whether registration of trade marks could have been opposed under ss 41 or 59 of the Act – whether pursuant to s 92(4) of the Act the marks should be removed from the Register for non-use – appeal dismissed ; TRADE MARKS – application for leave to appeal pursuant to s 195(2) of the Act – whether ground of opposition to registration of trade marks established pursuant to ss 42(b), 44(2) or 60 of the Act – leave to appeal refused
Legislation:	Competition and Consumer Act 2010 (Cth), Sch 2 Trade Marks Act 1995 (Cth), ss 41, 42, 43, 44, 58A, 59, 60, 88, 92, 97, 101, 195 Trade Marks Act 1955 (Cth) Trade Marks Act 1905 (Cth)
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205 Aldi Foods Pty Ltd (ACN 086 210 139) and Anor v Moroccanoil Israel Ltd (2018) 358 ALR 683 Apple Inc v Registrar of Trade Marks(2014) 227 FCR 511 Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257 Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490 Boensch v Pascoe (2019) 375 ALR 15 Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 354 ALR 353 Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd(2011) 191 FCR 444 Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 Lomas v Winton Shire Council (2003) AIPC 91-839 Mark Foy’s Ltd v Davies Co-Operative & Co Ltd(1956) 95 CLR 190 McCormick & Co Inc v McCormick (2000) 51 IPR 102 Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 86 IPR 1 Nature’s Blend Pty Ltd v Nestle Australia Ltd [(2010) 272 ALR 487 Re Application of J&P Coats Ltd[1936] 2 All ER 975 Rodney Jane Racing Pty Ltd v Monster Energy Company (2019) 370 ALR 140 Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Tivo Inc v Vivo International Corporation Pty Ltd[2012] FCA 252 Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 369 ALR 367 Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd(2020) 384 ALR 230 Vivo International Corporation Pty Ltd (2012) 294 ALR 661 Woolworths Ltd v BP plc(2006) 150 FCR 134
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	245
Date of hearing:	3 and 4 August 2020
Counsel for the Appellant:	Mr T Bannon SC with Ms M Marcus
Solicitor for the Appellant:	Allens
Counsel for the First Respondent:	Ms S Goddard SC with Ms S Ross
Solicitor for the First Respondent:	Sparke Helmore Lawyers
Counsel for the Second Respondent:	The Second Respondent filed a submitting notice

ORDERS

		NSD 1956 of 2019
BETWEEN:	BENDIGO AND ADELAIDE BANK LIMITED (ACN 068 049 178) Appellant
AND:	COMMUNITY FIRST CREDIT UNION LIMITED (ACN 087 649 938) First Respondent ; REGISTRAR OF TRADE MARKS Second Respondent

order made by:	MIDDLETON, BURLEY AND THAWLEY JJ
DATE OF ORDER:	11 March 2021

THE COURT ORDERS THAT:

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

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ORDERS

		NSD 1963 of 2019
BETWEEN:	BENDIGO AND ADELAIDE BANK LIMITED (ACN 068 049 178) Applicant
AND:	COMMUNITY FIRST CREDIT UNION LIMITED (ACN 087 649 938) First Respondent ; REGISTRAR OF TRADE MARKS Second Respondent

order made by:	MIDDLETON, BURLEY AND THAWLEY JJ
DATE OF ORDER:	11 March 2021

THE COURT ORDERS THAT:

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

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

MIDDLETON AND BURLEY JJ:

INTRODUCTION

1 These reasons concern both an appeal and an application for leave to appeal from orders of a judge of this Court delivered on 24 October 2019, giving effect to reasons published on 20 September 2019 in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553 (‘Judgment’).

2 The appellant and applicant in both proceedings is Bendigo and Adelaide Bank Limited (‘Bendigo’).

3 Bendigo owned three trade marks that used the words “community bank”. On 8 February 1999, Bendigo registered trade mark no. 784796 for (‘Bendigo Device Mark’). On 24 August 2001, Bendigo registered trade mark no. 887023 for the words COMMUNITY BANK (‘Bendigo Word Mark’) (collectively ‘Bendigo Community Marks’). The Bendigo Community Marks were registered in class 36 in respect of the following services provided by Bendigo (‘Services’):

Financial services including banking services, capital investments, financial management and valuation, financing loans, mortgage banking and saving bank services; insurance services including accident insurance, fire insurance, health insurance, life insurance and insurance underwriting; hire-purchase financing services; lease financing services; financing for leasing and hire-purchase of machines and motor vehicles; leasing and rental of farms; leasing and rental of real estate; leasing and rental of houses and apartments; leasing and rental of office buildings; leasing and rental of...