Community First Credit Union Limited v Bendigo and Adelaide Bank Limited

• Jurisdiction: Australia Federal only
• Judge: MARKOVIC J
• Judgment Date: 20 September 2019
• Neutral Citation: [2019] FCA 1553
• Court: Federal Court
• Date: 20 September 2019

FEDERAL COURT OF AUSTRALIA

Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553

File numbers:	NSD 1386 of 2017 NSD 1389 of 2017
Judge:	MARKOVIC J
Date of judgment:	20 September 2019
Catchwords:	TRADE MARKS – application for rectification of the Register of Trade Marks pursuant to s 88(1) of the Trade Marks Act 1995 (Cth) (TM Act) by removing or cancelling the mark COMMUNITY BANK and device mark and orders pursuant to s 97 or s 101 of the TM that the marks be removed from the Register – whether pursuant to s 88(2)(a) of the TM Act registration of the marks could have been opposed the under ss 41, 42(b), 43, 44 or 59 of the TM Act – whether pursuant to s 88(2)(c) TM ACT because of the circumstances applying at the time of filing of the application for rectification use of the marks likely to deceive or cause confusion – whether pursuant to s 92(4) of the TM Act the marks should be removed from the Register for non-use – application allowed ; TRADE MARKS – appeal pursuant to s 56 of the TM Act against decision of the Registrar of Trade Marks to uphold opposition to registration of the marks COMMUNITY FIRST BANK and COMMUNITY FIRST CREDIT UNION – whether a ground of opposition to registration of the marks is established pursuant to ss 42(b), 44, 58A, 59 and 60 of the TM Act – appeal allowed
Legislation:	Competition and Consumer Act 2010 (Cth) Sch 2, ss 18, 29 Banking Act 1959 (Cth) s 66 Federal Court Rules 2011 (Cth) r 2.25(3) Trade Marks Act 1995 (Cth) ss 10, 41, 42(b), 43, 44, 58A, 59,60, 88(1), 88(2), 89, 92(4), 97 and 101 Trade Practices Act 1974 (Cth) s 52
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205; [2017] FCAFC 56 Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514 Aston v Harlee Manufacturing Co(1960) 103 CLR 391 Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93; [2004] FCA 968 Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd(2014) 317 ALR 73; [2014] FCA 634 Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 354 ALR 353; [2018] FCA 235 C I Kasei Co Ltd v PGM Group Pty Ltd (2002) 57 IPR 267 Caesarstone Ltd v Ceramiche Caesar SpA (No 2) (2018) 133 IPR 417; [2018] FCA 1096 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 Health World Ltd v Shin-Sun Australia Pty Ltd (2005) 64 IPR 495; [2005] FCA 5 McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335 Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232; [2016] FCA 1406 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354; [2009] FCA 606 Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183; [2012] FCA 1022 New South Wales Lotteries Commission v Novamedia BV (2001) 52 IPR 638 Pfizer Products Inc v Karam (2006) 219 FCR 585 Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd(1998) 88 FCR 354 Samuel Taylor Pty Ltd v Registrar of Trade Marks (1959) 102 CLR 650 Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd(1954) 91 CLR 592 Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd (2003) 134 FCR 51 Van den Berg v Hamilton [2007] ATMO 31 Virgin International Pty Ltd v Virgin Enterprises Ltd (2010) 87 IPR 440; [2010] ATMO 38 Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97
Date of hearing:	28–30 November, 3, 4 and 7 December 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	521
Counsel for the Appellant/Applicant:	Ms S Goddard SC and Ms G Rubagotti
Solicitor for the Appellant/Applicant:	Sparke Helmore
Counsel for the Respondent/ First Respondent:	Mr C Golvan QC and Ms M Marcus
Solicitor for the Respondent/First Respondent:	Group Legal, Bendigo and Adelaide Bank Limited
Counsel for the Registrar of Trade Marks:	The Registrar of Trade Marks filed a submitting notice save as to costs

ORDERS

		NSD 1386 of 2017
BETWEEN:	COMMUNITY FIRST CREDIT UNION LIMITED Appellant
AND:	BENDIGO AND ADELAIDE BANK LIMITED Respondent

JUDGE:	MARKOVIC J
DATE OF ORDER:	20 September 2019

THE COURT ORDERS THAT:

1. Subject to Orders 2 and 3, on or before 4 October 2019 the parties are to endeavour to agree the appropriate form of orders to be made reflecting the conclusions expressed in these reasons, and to provide a copy of those draft orders to the Associate to Markovic J.

2. If no agreement is reached, on or before 11 October 2019 the parties are to notify the Court of the orders for which they each contend and to each provide written submissions, not exceeding three pages in length, explaining why those orders should be made.

3. If agreement cannot be reached pursuant to Order 1, the proceeding will be listed before Markovic J on 17 October 2019 at 9.30 am. The respondent is granted leave to appear by video conference facility at that time.

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

ORDERS

		NSD 1389 of 2017
BETWEEN:	COMMUNITY FIRST CREDIT UNION LIMITED Applicant
AND:	BENDIGO AND ADELAIDE BANK LIMITED First Respondent
	REGISTRAR OF TRADE MARKS Second Respondent

JUDGE:	markovic j
DATE OF ORDER:	20 september 2019

THE COURT ORDERS THAT:

1. Subject to Orders 2 and 3, on or before 4 October 2019 the parties are to endeavour to agree the appropriate form of orders to be made reflecting the conclusions expressed in these reasons, and to provide a copy of those draft orders to the Associate to...