FEDERAL COURT OF AUSTRALIA

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

ORDERS

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

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 flats; hire purchase finance services in relation to machines and vehicles.

4    On 28 February 1999, Bendigo also registered in class 36 trade mark no. 746687 (Bendigo Composite Mark) for:

5    Problems began to arise when, on 1 March 2013, the first respondent, Community First Credit Union Limited (‘CFCU’), sought to register two trade marks that each used the words “community” and “bank”: trade mark application no. 1541620 for COMMUNITY FIRST BANK; and no. 1541594 for COMMUNITY FIRST MUTUAL BANK (collectively ‘CFCU Marks’) in class 36 for certain services including “financial services” and “personal banking services”.

6    On 27 April 2016, Bendigo opposed the registration of the CFCU Marks on the basis of s 44 of the Trade Marks Act 1995 (Cth) (‘TM Act’). On 21 July 2017, a delegate of the second respondent, the Registrar of Trade Marks (‘Registrar’), allowed the opposition and decided that the CFCU Marks should be refused registration: Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd (2017) 128 IPR 374.

7    On 14 August 2017, CFCU appealed the Registrar’s decision of 21 July 2017 (‘Opposition Proceeding’). On the same day, CFCU brought an application pursuant to s 88(1) of the TM Act seeking orders that the Register of Trade Marks (‘Register’) be rectified by cancelling and removing the Bendigo Community Marks.

8    At the hearing, CFCU pressed grounds for rectification under ss 41, 42(b), 43, 44, 59 and 88(2)(c) of the TM Act, and alternatively sought orders pursuant to either s 97 or s 101 of the TM Act requiring the Registrar to remove the Bendigo Community Marks from the Register on the ground of lack of intention to use under s 92(4) of the TM Act (‘Rectification Proceeding’).

9    The primary judge found in favour of CFCU in the Rectification Proceeding on the basis of the ground raised under s 41, but rejected the balance of grounds advanced for the purpose of s 88(1) of the Act. The primary judge determined to rectify the Register by cancelling the registration of the Bendigo Community Marks.

10    The primary judge also found in favour of CFCU in the Opposition Proceeding and rejected grounds advanced in opposition to the registration of the CFCU Marks under ss 42(b), 44, 58A, 59 and 60 of the TM Act. The primary judge set aside the Registrar’s decision, so as to permit the CFCU Marks to proceed to registration.

11    On 21 November 2019, Bendigo filed a notice of appeal with respect to the part of the primary judge’s decision in the Rectification Proceeding relating to the ground raised under s 41 of the TM Act. Bendigo contends that the primary judge erred in finding that the Bendigo Community Marks were not capable of distinguishing the Services from the goods and services of other persons as required by s 41(2) of the TM Act, and thus ought not to have determined to remove the Bendigo Community Marks from the Register pursuant to s 88(1) of the TM Act.

12    On 18 December 2019, CFCU filed a notice of contention with respect to part of the primary judge’s decision in the Rectification Proceeding. In the notice of contention, CFCU seeks to uphold the primary judge’s finding that the Bendigo Community Marks were not distinctive as required by s 41(2) of the TM Act on the alternative basis that the term “community bank” contains a direct reference to or indicates the kind, quality, intended purpose, or some other characteristic of the Services. CFCU also contends that the primary judge erred in finding that CFCU had not established a prima facie case for opposition to registration under s 59 of the TM Act for lack of intention to use the Bendigo Community Marks, and the primary judge ought to have found that this was also a basis for removing the trade marks pursuant to s 88(1) of the TM Act. Finally, CFCU contends that the primary judge ought to have determined to remove the Bendigo Community Marks from the Register on the ground of s 92(4) of the TM Act, being an independent ground for removal for lack of use.

13    In essence, there are three issues in the appeal. The first issue is whether “community bank” means simply a provider of financial services that services a particular community, so that it does not distinguish the Services from those of other traders. The second issue is whether Bendigo’s use of the term “community bank” meant that the word became distinctive of the Services even if it was not originally so. The third arises on the notice of contention, and concerns whether there was sufficient intention to use the Bendigo Marks within the meaning of either s 59 or s 92(4) of the TM Act.

14    On 21 November 2019, Bendigo also applied for leave pursuant to s 195(2) of the TM Act to appeal part of the primary judge’s decision in the Opposition Proceeding on the basis that the primary judge erred in her conclusion that the grounds of opposition to the CFCU Marks under ss 60, 44 and 42(b) of the TM Act should be dismissed. The central issues in the application are: the extent of any reputation that the Bendigo Word Mark had acquired in Australia; and whether the CFCU Marks were deceptively similar to the Bendigo Word Mark such that the application for registration of the CFCU Marks ought to have been rejected.

15    For the reasons set out in more detail below we have concluded that the learned primary judge did not err in her conclusions reached pursuant to s 41 of the TM Act, with the consequence that the Register must be rectified by the removal of those marks. Having regard to that conclusion, it is unnecessary for us to consider the notice of contention insofar as it raises issues under ss 59 and 92(4) of the TM Act. We have also concluded that the application for leave to appeal from the primary judge’s decision in the Opposition Proceeding should be refused.

THE PRIMARY JUDGE’S REASONS

16    We set out in the following paragraphs the reasons of the primary judge insofar as they are relevant to the appeal and application.

Rectification Proceedings

Section 41 – lack of distinctiveness

17    An application for the registration of a trade mark must be rejected if the mark is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons: s 41(2) of the TM Act (as it applied at 8 February 1999 and 24 August 2001, being the respective priority dates of the Bendigo Device Mark and the Bendigo Word Mark (‘Bendigo Priority Dates’)).

18    As at the Bendigo Priority Dates, s 41(2)-(6) of the TM Act relevantly provided:

41    Trade mark not distinguishing applicant’s goods or services

[…]

(2)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3)    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)    Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)    If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)    the Registrar is to consider whether, because of the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

    (ii)    the use, or intended use, of the trade mark by the applicant;

    (iii)    any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)    if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)    if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

(6)    If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)    if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)    in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

19    Note 1 to s 41(6) of the TM Act also provided as follows:

Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)     the time of production of goods or of the rendering of services.

20    There were three steps to the primary judge’s conclusion that the Bendigo Community Marks were not capable of distinguishing the Services as required by s 41(2) of the TM Act.

21    First, the primary judge found that the Bendigo Community Marks were not to any extent inherently adapted to distinguish the Services within the meaning of s 41(3) of the TM Act. In reaching this conclusion, her Honour found that the term “community bank” was directly descriptive of the Services and that as at the Bendigo Priority Dates other traders might legitimately have desired to use those words for their ordinary signification. The primary judge found (Judgment, [233]) the ordinary signification of the term “community bank” to be “a provider of banking services or financial institution that serves a particular community, whether defined by geography, workplace, trade or other feature”. The primary judge relevantly found:

[205]    CFCU did not rely on any evidence as to the ordinary signification of the term “community bank”. But none is needed. As CFCU contended in this part of its case, the words “community” and “bank” have their ordinary signification namely, in the case of “community”, the local people or people gathered or brought together by some commonality and, in the case of “bank”, a financial establishment or institution. Those asserted meanings are reinforced by the dictionary definition of the word “community”. The Macquarie Dictionary (Federation Edition, 2001), an excerpt from which was tendered in evidence by Bendigo, defines community to mean, amongst other things “a social group of any size whose members reside in a specific locality, share government, and have a cultural and historical heritage” or “similar character; agreement; identity”.

[206]    When used in combination the words “community” and “bank” convey the meaning of the provision of financial services to a group of people brought together by a common feature, for example geography, occupation or workplace. The use of these terms in conjunction is not so unique as to alter the meanings that “community” and “bank” possess individually.

[...]

[233]    The ordinary signification of the term “community bank” is a provider of banking services or financial institution that serves a particular community, whether defined by geography, workplace, trade or other feature. It is directly descriptive of the Services. Further, the evidence establishes that other traders, not actuated by improper motive, might, and indeed did as at the Priority Dates, legitimately desire to use those words for their ordinary signification.

22    Secondly, as a consequence of the finding in relation to s 41(3), and by operation of s 41(4), the primary judge found that s 41(5) of the TM Act did not have any application.

23    Thirdly, the primary judge found that the extent of use of the Bendigo Community Marks as at the Bendigo Priority Dates was not sufficient to distinguish the Services within the meaning of s 41(6)(a) of the TM Act. The primary judge found that there was no evidence of use of the Bendigo Device Mark prior to 8 February 1999, and in respect of use of the Bendigo Word Mark prior to 24 August 2001:

(1)    in almost all instances, the term “community bank” was used in conjunction with or in close proximity to the words “B Bendigo Bank” (‘B Bendigo Mark’) (Judgment, [260]), which comprised a stylised “B” and the words BENDIGO BANK. Two examples are given by the primary judge (Judgment, [142]):

and

(2)    most instances of use relied on by Bendigo were use of the Bendigo Composite Mark (as distinct from the Bendigo Word Mark) (Judgment, [260]). As the primary judge there explained:

The parties’ focus was on the Bendigo Word Mark. Insofar as that mark is concerned, I am not satisfied that Bendigo’s use of the term “community bank” before August 2001 would have appeared to consumers of the Services as possessing the character of a brand. Where Bendigo or its franchisees used those words, in almost all cases they were used in conjunction with the B Bendigo Mark or in close proximity to it. Critically, in my opinion, in most cases what was presented and used was the Bendigo Composite Mark, and not the Bendigo Word Mark as a trade mark. Even if that was not so, the presence of the B Bendigo Mark or Bendigo branding on the vast majority of the material makes it difficult to conclude that “community bank” had become distinctive of the Services on its own by August 2001.

(3)    the occasional use of the term “community bank” on its own was not sufficient to establish use of the Bendigo Word Mark as a trade mark (Judgment, [276]).

24    The primary judge thus found that registration of the Bendigo Community Marks could have been successfully opposed under s 41(2) of the TM Act, which meant that registration of the Bendigo Community Marks was liable to be cancelled under s 88(1)(a) in reliance on s 88(2)(a) of the TM Act. This was the basis on which the primary judge determined to cancel the registration of the Bendigo Community Marks.

Section 59 – no intention to use

25    An application for registration may also be opposed if the applicant does not intend to use the trade mark in Australia in relation to the goods or services specified in the application: s 59 of the TM Act.

26    As at the Bendigo Priority Dates, s 59 of the TM Act provided:

59    Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

 (a)    to use, or authorise the use of, the trade mark in Australia; or

(b)    to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

27    In order to establish a prima facie case of no intention to use the Bendigo Community Marks, CFCU relied on there being no evidence of use of the Bendigo Device Mark and limited use of the term “community bank” (and not as a trade mark) prior to the respective Bendigo Priority Dates. CFCU also relied on correspondence between Bendigo and the Reserve Bank of Australia (‘RBA’) in relation to use of the term “community bank”, which it said demonstrated Bendigo’s lack of intention to use the trade marks.

28    The primary judge rejected CFCU’s submissions that this evidence established a lack of intention to use the Bendigo Community Marks. The primary judge found that the correspondence between Bendigo and the RBA only indicated the requirements of the RBA, as distinct from Bendigo’s subjective intention to use or not use the marks. The primary judge found that the limited use of the term “community bank”, although not use in a trade mark sense, went some way to establishing Bendigo’s intention to use the Bendigo Community Marks. The primary judge also placed reliance on the fact that Bendigo had filed trade mark applications for the Bendigo Community Marks as prima facie evidence of intention to use the trade marks.

29    The primary judge thus determined that CFCU did not discharge its evidential onus of establishing a prima facie case of non-use pursuant to s 59 of the TM Act. It followed that CFCU could not rely on s 59 as a further ground of opposition to registration of the Bendigo Community Marks for the purpose of s 88(2)(a) of the TM Act.

Section 92(4) – non-use

30    A person may apply for removal of a trade mark from the Register that has been registered for at least three years on the basis that the applicant had no intention in good faith to use the trade mark in Australia and has not done so: s 92(4) of the TM Act. This is an independent basis for removal of a trade mark and has a separate operation to s 88 of the TM Act.

31    Section 92(1)-(4) of the TM Act provides:

92     Application for removal of trade mark from Register etc.

(1)    Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2)    The application:

  (a)    must be in accordance with the regulations; and

(b)    may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)    An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

(4)    An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a)    that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

    (i)    to use the trade mark in Australia; or

    (ii)    to authorise the use of the trade mark in Australia; or

(iii)    to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)    has not used the trade mark in Australia; or

   (v)    has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(b)    that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)    used the trade mark in Australia; or

(ii)    used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

32    Given the primary judge’s findings under s 88(1) of the TM Act, the primary judge did not consider the application of either this provision or ss 97 and 101, which provide for the circumstances in which a trade mark may be removed following an application under s 92(1).

Opposition Proceedings

Section 60 – deceit or confusion

33    An application for the registration of a trade mark may be opposed on the basis that another trade mark had acquired a reputation in Australia before the priority date of the first-mentioned trade mark, and that because of that reputation the use of the first-mentioned trade mark would be likely to deceive or cause confusion: s 60 of the TM Act.

34    Section 60 of the TM Act provides (and did so as at 1 March 2013, being the priority date for the CFCU Marks (‘CFCU Priority Date’)):

60 Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

35    For the purpose of s 60 of the TM Act, Bendigo did not rely on any reputation in the Bendigo Device Mark and instead relied on the reputation of the Bendigo Word Mark as at the CFCU Priority Date. In this regard, the primary judge found:

(1)    a substantial amount of evidence relied on by Bendigo was of use of the Bendigo Word Mark as either an aspect of the Bendigo Composite Mark or in combination with the B Bendigo Mark, the words “Bendigo Bank” (‘Bendigo Bank Mark’) or other indicia of Bendigo such as the identifiable Bendigo colours: maroon and yellow (Judgment, [440]-[441]);

(2)    when the Bendigo Word Mark was used in combination with the B Bendigo Mark, the Bendigo Bank Mark or other indicia of Bendigo, the dominant cognitive cue in the material was the B Bendigo Mark or the Bendigo Bank Mark, rather than the Bendigo Word Mark (Judgment, [441]-[442]);

(3)    the evidence of business volume, number of staff and community bank branches (referred to by the primary judge as Bendigo’s “indicia of success”) could not be disentangled from the reputation Bendigo had in the Bendigo Bank Mark, the B Bendigo Mark and the Bendigo Composite Mark (Judgment, [444]-[445]); and

(4)    many of the newspaper articles used the term “community bank” in a descriptive sense and there were only a few instances of use of “community bank” or reference to a particular “Community Bank” without reference to Bendigo (Judgment, [446]).

36    On this basis, the primary judge found that the Bendigo Word Mark did not have a reputation amongst the Australian general public as at the CFCU Priority Date for the purpose of s 60(a) of the TM Act. Given this finding, her Honour did not proceed to consider whether use of the CFCU Marks would be likely to deceive or cause confusion for the purpose of s 60(b) of the TM Act.

Section 44(2) of the TM Act – deceptive similarity

37    An application for the registration of a trade mark in respect of services must be rejected if it is deceptively similar to a trade mark already registered by another person in respect of similar services: s 44(2) of the TM Act.

38    As at the CFCU Priority Date, s 44(2)-(4) of the TM Act provided:

44    Identical etc. trade marks

[…]

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)     a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)    a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods

(3)    If the Registrar in either case is satisfied:

  (a)     that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)    If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)    beginning before the priority date for the registration of the other trade mark in respect of:

(i)    the similar goods or closely related services; or

(ii)     the similar services or closely related goods; and

(b)    ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

39    In the court below, the primary judge was asked to consider whether the CFCU Marks were deceptively similar to the Bendigo Word Mark. The primary judge found:

(1)    the inclusion of the word “first” or the words “first mutual” in the CFCU Marks rendered them both visually and aurally different to the Bendigo Word Mark (Judgment, [454]);

(2)    there was no evidence that consumers would not understand the term “mutual” and, even if that were so, this does not mean that consumers would give little attention to it (Judgment, [455]);

(3)    the essential features of the respective CFCU Marks were the words “community first” and “community first mutual” (Judgment, [456]-[457]);

(4)    the word “bank” is descriptive, it denotes the nature of the organisation, and could not be said to be an essential feature (Judgment, [457]);

(5)    the word “community” was not so distinctive or unique that confusion would not be dispelled by the inclusion of additional words (Judgment, [458]);

(6)    given the nature of banking and financial services, a degree of care would be taken by even less sophisticated consumers when acquiring the services, so as to reduce the likelihood of confusion (Judgment, [459]); and

(7)    further, given that such services are acquired, at least on the first occasion, through store fronts, any confusion that might have existed would be dispelled at the point of sale (Judgment, [459]).

40    On this basis, the primary judge found that the CFCU Marks were not deceptively similar to the Bendigo Word Mark. The primary judge was therefore not required to consider the application of s 44(3) or s 44(4) of the TM Act. Her Honour nonetheless set out observations on the potential application of these provisions at [460]-[474] of the Judgment.

Section 42(b) of the TM Act – contrary to law

41    An application for the registration of a trade mark must be rejected if its use would be contrary to law: s 42(b) of the TM Act.

42    The primary judge was asked to consider whether use of the CFCU Marks would be contrary to either s 18 or s 29 of the Australian Consumer Law (‘ACL’), being Sch 2 to the Competition and Consumer Act 2010 (Cth). Bendigo submitted that use of the CFCU Marks would mislead consumers into believing that the services were being offered by Bendigo, thereby contravening either or both provisions of the ACL.

43    The primary judge referred to her earlier findings as to lack of deceptive similarity between the Bendigo Word Mark and the CFCU Marks for the purpose of s 44(2) of the TM Act. The primary judge determined that these findings were even more fatal to Bendigo’s argument in this instance and thus determined that use would not be contrary to law for the purpose of s 42(2)(b) of the TM Act.

44    The primary judge was therefore not satisfied that Bendigo had made out any basis for opposition to registration of the CFCU Marks.

RELEVANT LEGAL PRINCIPLES

45    The applicable principles for appellate review were set out by Allsop J (as his Honour then was) in Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 (‘Branir’). His Honour held (Drummond and Mansfield JJ agreeing):

[28]    …First, the appeal court must make up its own mind on the facts. Secondly, that task can only be done in the light of, and taking into account and weighing, the judgment appealed from. In this process, the advantages of the trial judge may reside in the credibility of witnesses, in which case departure is only justified in circumstances described in Abalos v Australian Postal Commission (1988) 171 CLR 167; Devries v Australian National Railways Commission (1993) 177 CLR 472 and SRA v Earthline, supra. The advantages of the trial judge may be more subtle and imprecise, yet real, not giving rise to a protection of the nature accorded credibility findings, but, nevertheless, being highly relevant to the assessment of the weight to be accorded the views of the trial judge. Thirdly, while the appeal court has a duty to make up its own mind, it does not deal with the case as if trying it at first instance. Rather, in its examination of the material, it accords proper weight to the trial judge's views. Fourthly, in that process of considering the facts for itself and giving weight to the views of, and advantages held by, the trial judge, if a choice arises between conclusions equally open and finely balanced and where there is, or can be, no preponderance of view, the conclusion of error is not necessarily arrived at merely because of a preference of view of the appeal court for some fact or facts contrary to the view reached by the trial judge.

[29]    The degree of tolerance for any such divergence in any particular case will often be a product of the perceived advantage enjoyed by the trial judge. Sometimes, where matters of impression and judgment are concerned, giving "full weight" or "particular weight" to the views of the trial judge might be seen to shade into a degree of tolerance of divergence of views: compare S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466, 478 and 491; Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 23 FCR 331; Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553; Allsop Inc v Bintang Ltd (1989) 15 IPR 686; Dart Industries v Decor Corporation Pty Ltd (1989) 15 IPR 403, 412; and Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 at [27]. In such cases the personal impression or conception of the trial judge may be one not fully able to be expressed or reasoned: see for example In re Wolanski's Registered Design (1953) 88 CLR 278, 281 and Secretary of State for Foreign Affairs v Charlesworth, Pilling & Co [1901] AC 363, 391. However, as Hill J said in Commissioner of Taxation v Chubb Australia (1995) 56 FCR 557, 573 "giving full weight" to the view appealed from should not be taken too far. The appeal court must come to the view that the trial judge was wrong in order to interfere. Even if the question is one of impression or judgment, a sufficiently clear difference of opinion may necessitate that conclusion.

46    These principles have been followed on a number of occasions, including in Aldi Foods Pty Ltd (ACN 086 210 139) and Anor v Moroccanoil Israel Ltd (2018) 358 ALR 683 (‘Aldi Foods’) at [10] (Allsop CJ) and [53] (Perram J) (Markovic J agreeing), where the Full Court drew a distinction between appeals that involve fact-finding with witnesses and matters of evaluative judgment or impression. In the latter case, the Full Court held that the appellate court is not confined to intervene only where satisfied that the trial judgment is “plainly and obviously wrong”: [3]-[10] (Allsop CJ) and [52]-[53] (Perram J). Where the appellate court is reviewing a finding involving an evaluative standard, the court should determine how extensive the difference of opinion must be before intervening with a trial judgment, and should do so by reference to the extent of the perceived advantages of the trial judge in any given case: Aldi Foods at [52]-[53] (Perram J) applying Branir and EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd (2011) 191 FCR 444. Where Bendigo is reviewing fact-finding involving witnesses, the perceived advantages of the trial judge are necessarily greater.

47    We do not need to delay on a consideration of the applicable principles for determining an application for leave to appeal under s 195(2) of the TM Act: see generally Lomas v Winton Shire Council (2003) AIPC 91-839 and Woolworths Ltd v BP plc (2006) 150 FCR 134.

48    We have had the advantage of extensive submissions on the merits of the arguments put in support of leave to appeal. The conclusion we have reached is that there is no merit to those arguments nor even a clear prima facie case of error in the decision of the primary judge. As there is no other circumstance that would indicate leave should be granted, leave will simply be refused.

49    The applicable legal principles for the specific provisions of the TM Act, where relevant, are addressed below with our conclusions on the specific grounds of appeal and application for leave to appeal.

APPEAL GROUND GROUNDS 1 TO 6 AND NOTICE OF CONTENTION GROUND 1: S 41(3) OF THE TM ACT

50    Ground 1 of the notice of appeal contends that the primary judge erred by finding that the Bendigo Community Marks were not inherently adapted to distinguish the Services as at the Bendigo Priority Dates within the meaning of s 41(3) of the TM Act. This ground is informed by Grounds 2 to 6 of the notice of appeal and relates to Ground 1 of the notice of contention.

51    Ground 2 of the notice of appeal contends that the primary judge erred in finding that the term “community bank” had an ordinary signification or meaning that was directly descriptive of the Services, namely:

(a)    the provision of financial services to a group of people brought together by a common feature, for example, geography, occupation or workplace (Judgment,  [206]); or

(b)    the provision of financial services to a community of people defined by geography (Judgment, [207]); or

(c)    a provider of banking services or financial institution that serves a particular community, whether defined by geography, workplace, trade or other feature (Judgment, [233]),

and ought to have found that it had no ordinary signification or meaning as at the Bendigo Priority Dates.

52    The notice of appeal provides the following particulars:

(i)    “Community Bank” does not describe, directly or at all, the nature or quality of any Service offered or provided to any person, nor does it describe, directly or at all, a geographical or other constraint on the persons to whom the Services would be offered or supplied.

(ii)    A descriptor of an entity which provides "banking services" or "serves a particular community" (meaning (c)) is not a direct descriptor of the services provided by that entity.

(iii)    The availability of more than one potential feature identifier of the groups to whom the Services are said to be provided in the case of meaning (a) of “geography, occupation or workplace” and in the case of meaning (c) of “geography, workplace, trade or other feature”, each such identifier apparently being equally available and each with different selection criteria, is antithetical to “community bank” being a direct descriptor of the Services on any view.

(iv)    The meanings are contrary to the nature and extent of the evidence as to the use of “community bank” as at the Priority Dates. That evidence included evidence that, as at the Priority Dates, the term ‘bank’ was highly regulated and only Authorised Deposit Taking Institutions (ADIs) approved by (as relevant) the [RBA] or the Australian Prudential Regulation Authority (APRA) as a bank had the unrestricted right to use the word ‘bank’. That evidence is contraindicative of any meaning of “community bank” as directly describing services offered or provided only to persons defined by geography or otherwise.

53    Ground 3 of the notice of appeal contends, further or in the alternative, that if the term “community bank” had an ordinary signification or meaning as at the Bendigo Priority Dates, the primary judge ought to have found that it conveyed covert or skilful or metaphorical allusions to undefined and unspecified concepts or notions, none of which was directly descriptive of the Services or their kind, quality or other characteristic.

54    The notice of appeal provides the following particulars:

In combination, the words 'community' and 'bank', as a matter of language and in the light of the evidence before the Court, conveyed covert or skilful or metaphorical allusions to any or all of the following, by way of example:

(i)    the concept or notion of a bank which provided, in an undefined and unspecified way, actual or potential benefits to persons or businesses located in or with an interest in the community beyond the mere provision of financial services from a location in a particular geographical area;

(ii)    the concept or notion of a bank which may exhibit a benevolent focus in serving, in some undefined and unspecified way, the community;

(iii)     the concept or notion of a bank some or all of the profits of which will or may in some undefined and unspecified way be shared or distributed amongst persons or businesses located in or with an interest in the community; and

(iv)    the concept or notion of a bank over the operations of which persons living in or with an interest in the community did or could have some form of undefined or unspecified proprietary interest.

(See for example references to evidence and submissions in the Judgment at [127]-[128], [130], [132]-[133], [144]-[146], [152], [156], [173], [190], [193], [293]-[294], [304], [308], [309], [316], [382]-[383]).

55     Ground 4 of the notice of appeal contends that the primary judge erred in finding that the use of the terms “community” and “bank” in conjunction was not so unique as to alter the meanings of the individual words, and that the primary judge failed to take any or sufficient account of evidence to the contrary.

56    The notice of appeal provides the following particulars:

(i)    The evidence of Mr Hunt before the primary judge was that the phrase ‘Community Bank’ had not been used by anyone else in Australia as at the Priority Dates.

(ii)    The evidence of Associate Professor Abbott before the primary judge was that when Bendigo adopted the name ‘Community Bank’ for its franchised bank branches, there was no other ADI in Australia using the term 'community bank' and the term was unique to Bendigo.

57    Ground 5 of the notice of appeal contends that the primary judge erred in fact in finding that there was limited evidence of use of or desire to use by other traders of the words “community bank” or of a desire to use those words as at the Bendigo Priority Dates.

58    The notice of appeal provides the following particulars:

(i)    The evidence before the primary judge was that there was no use by third parties of the term ‘community bank’ as at the Priority Dates.

(ii)    The evidence before the primary judge was that mutual organisations such as credit unions could not use the word ‘bank’ in relation to their trading activities as at the Priority Dates and the first credit union to call itself a bank was in 2011 after legislative changes in 2010.

59    Ground 6 of the notice of appeal contends, further or in the alternative, that the primary judge erred in fact in finding that the evidence establishes that other traders not actuated by improper motive might, and indeed did as at the Bendigo Priority Dates, legitimately desire to use the words “community bank” for their ordinary signification.

60    In Ground 1 of the notice of contention, CFCU contends:

In the alternative to the Primary Judge's finding at [204] that the Bendigo Community Marks were directly descriptive of the services, the Primary Judge's decision that the Bendigo Community Marks were not distinctive at the priority dates, in terms of section 41 of the Trade Marks Act 1995 (Cth), should be upheld because the words "community bank" contain a direct reference to, or indicate the kind, quality, intended purpose, or some other characteristic, of the services.

Relevant legal principles

61    The principles applied by the primary judge for determining whether the Bendigo Community Marks were inherently adapted to distinguish the Services within the meaning of s 41(3) of the TM Act are not in dispute on appeal.

62    The primary judge set out the test formulated by Kitto J in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 (‘Clark Equipment’) at 514, as endorsed in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 (‘Cantarella’) at [26] (French CJ, Hayne, and Crennan JJ and Kiefel J (as her Honour then was)), being:

… whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

63    The primary judge also referred to the following extracts from the decision of the majority of the High Court in Cantarella:

[59]    …It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

    […]

[71]    As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.

64    In Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 at [11], Yates J described the nature of the s 41(3) inquiry in relation to word marks as follows:

What does it mean to say that a trade mark is inherently adapted to distinguish the goods or services of one person from the goods or services of another? The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade.

65    We also note the recent decision of the Full Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd (2020) 384 ALR 230. This case concerned the application of a subsequent version of s 41 of the TM Act to determine whether a trade mark was capable of distinguishing goods or services. The Full Court (Middleton, Yates and Lee JJ) observed (at [51]):

In trade mark law, a finding that a “word” mark is not to any extent inherently adapted to distinguish a trader’s goods from the goods of others means that the word, in relation to those goods, serves a purely descriptive function. The rationale for not allowing such words to be registered as trade marks is that the registration would result in an appropriation of the common stock of language that all should be free to use for its ordinary meaning.

Consideration

66    Bendigo’s grounds for attacking the ordinary signification of the term “community bank” as found by the primary judge are many and varied. Broadly, Bendigo first seeks to characterise the term “community bank” as having so many possible meanings that it has no ordinary meaning at all. Bendigo next says that the term “community bank” has no ordinary meaning (or at least had none as at the Bendigo Priority Dates) due to restricted use of the term “bank” and lack of use of the term “community bank” in Australia. Failing that, if the term is to have an ordinary meaning, Bendigo says it is one that conveyed covert or skilful or metaphorical allusions to concepts or notions of a bank providing undefined or unspecified benefits to the community. That is, a meaning that conveys all of the allusive references that Bendigo says arise out of Bendigo’s own use of the term in association with Bendigo’s community bank franchise model that was developed in 1997.

67    Bendigo also takes issue with whether the term was descriptive of the Services, and whether other traders legitimately desired to use the words to describe their services.

68    We will address each of Bendigo’s submissions in turn.

Are there inconsistent findings at [206], [207] and [233] of the Judgment?

69    Bendigo contends that there are inconsistent findings as to the ordinary signification of the term “community bank” in the following paragraphs of the Judgment:

[206]    When used in combination the words “community” and “bank” convey the meaning of the provision of financial services to a group of people brought together by a common feature, for example geography, occupation or workplace. The use of these terms in conjunction is not so unique as to alter the meanings that “community” and “bank” possess individually.

[207]    There is no covert or skilful allusion to the Services provided by Bendigo. The combined words are directly descriptive of the Services offered, namely the provision of financial services to a community of people defined by geography.

[…]

[233]    The ordinary signification of the term “community bank” is a provider of banking services or financial institution that serves a particular community, whether defined by geography, workplace, trade or other feature. It is directly descriptive of the Services. Further, the evidence establishes that other traders, not actuated by improper motive, might, and indeed did as at the Priority Dates, legitimately desire to use those words for their ordinary signification.

70    We do not accept this submission. First, we do not accept that [207] of the Judgment is a finding as to the ordinary signification of the term “community bank”. The language used in [207] is narrower than the other paragraphs — [206] and [233] contemplate the provision of services to communities that are defined by any common feature whereas [207] is limited to communities that are defined by geography. Yet these differences can be explained. At [207], it is clear that the primary judge is using the term “community bank” to describe the Services, as Bendigo provided the Services to local communities, rather than making a finding as to the ordinary meaning of the term.

71    We reach a similar conclusion in respect of [206] of the Judgment. When [206] is read in context alongside [207], it is apparent that even though the primary judge speaks of the meaning of the words used in combination, she is in fact using the words to describe the Services.

72    In any event, there is no inconsistency between [206] and [233] of the Judgment. Both paragraphs identify the recipients of services, namely a community defined by a common feature. The words “provision” ([206]) and “provider” ([233]) are cognate terms. The word “serves” in [233] is also used in the context of the earlier reference to “a provider of banking services or financial institution” and so, contrary to Bendigo’s submissions, any question as to the nature of the services referred to in this paragraph is answered by the preceding words.

73    We are therefore satisfied that the primary judge’s finding as to the ordinary signification of the term “community bank” is at [233] of the Judgment, and [206] and [207] are to be read as consistent variations of this meaning.

Is the term “community bank” so ambiguous that it has no ordinary meaning?

74    Bendigo’s submissions raise the issue of whether the existence of more than one possible meaning of a term in the one context has the consequence that the term has no ordinary meaning at all.

75    The existence of more than one possible meaning for a term, albeit in different contexts, has been recognised in the case law. In Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 354 ALR 353, Burley J held (at [143]):

First, dictionary definitions indicate that there are two potential meanings of “Bohemia”, one is a geographical location in the modern Czech Republic, another is a place where persons known as “Bohemians” who adopt an unconventional lifestyle live or where they come from. The upshot of Professor Moore’s evidence is that it demonstrates that one meaning for the word “Bohemia” may be a place from where people who adopt a “Bohemian” lifestyle come. That accords with one of the dictionary definitions identified. However, I consider that Professor Moore’s evidence is largely beside the point. The question relevant to the current inquiry is what is the ordinary signification of the relevant words to the target audience in the context of usage in relation to the relevant goods. That usage is to be considered leaving aside the “effects of registration” of the marks concerned (Apple at [11]), but having regard to the likely meaning. In this regard, I do not think it at all likely that persons who consider the word “Bohemia” in the context of glassware will be caused to think of the mythical place of origin for those persons who lead an unconventional lifestyle or the place where such persons live. Notably, Mr Hesse also shared that view.

(Emphasis in original.)

76    Burley J later held (at [154]):

In my evaluation, the word “Bohemia” when used in relation to the relevant goods at either of the relevant dates would ordinarily signify to traders, and also to many consumers, a region from where glassware is manufactured. I reach the same conclusion in relation to the words “Bohemia Crystal”. For some, the reference to “Bohemia Crystal” is likely also to denote a particular style of glassware that originates from Bohemia.

77    In Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, in the context of a passing off claim, the Full Court recognised that the words “pacific” and “pacific ale” described hops from Australia and New Zealand and also evoked a vague geographic reference and sense of calm. The Full Court (Allsop CJ, Nicolas and Katzmann JJ) held (at [66]):

…The relevant concepts are not binary in nature: descriptive or distinguishing. Language is more subtle than that. A word may have no precise meaning but be capable of evoking geographic as well as metaphoric resonances, without being particularly apt to distinguish goods of rival traders. See, for example, the word “Colorado” in the context of clothes and s 41 of the Trade Marks Act in Colorado Group Ltd v Strandbags Group Pty Ltd 164 FCR 506 […] at 538-540 [120]-[128].

78    The Full Court further held (at [95]):

…The words “Pacific Ale” and “Pacific” do have (as the primary judge found) a “descriptive” quality: that is, the word is apt to connote or evoke imprecise senses that do not distinguish the product. The vague geographic reference, the calming reference, and over this the reference to Australian and New Zealand hops are examples. All of these connotations were recognised by the business people involved, as discussed by the primary judge: see [22]-[27] above. This descriptive or non-distinctive quality was recognised by Mr Kirkegaard in the aptness and use of the word to connote a beer made from Australian and New Zealand hops. It may be used most particularly among brewers. That was recognised by the primary judge, but it supported the linguistic conclusion that he drew.

79    Bendigo contends that there is a range of meanings that could be attributed to the term “community bank” in the one context, and so the term is incapable of ordinary signification. The argument crystallised in the oral submissions of senior Counsel:

MR BANNON: …Firstly, her Honour treated ordinary signification as something that raised multiple unspecified options. We say that’s an incorrect approach. Secondly, her Honour, we submit, failed to give sufficient attention to the need – yes, your Honour.

BURLEY J: Mr Bannon, you said ordinary signification can address multiple and unspecified – do you mean the ordinary signification cannot encompass more than one ordinary usage?

MR BANNON: Yes. Well, I mentioned the Bohemia example earlier. One can have different meanings and different contexts, but if one is talking about one context – if we say if there’s a cavalcade of potential meanings, then – yes. We say that doesn’t amount to an ordinary signification.

BURLEY J: So if there are two potential meanings, then there’s no ordinary signification.

MR BANNON: Yes, in the sense that if you have to think about which one applies and how it applies, then it’s an immediate and direct reference.

BURLEY J: Even though both could apply quite sensibly.

MR BANNON: It probably – as an absolute proposition, your Honour is probably right: that that may not be always – if in other words, if – something could have both qualities, but if the something by the cavalcade of possibilities presents as having different, and quite different, properties and you have to choose between us or you just don’t know which one is being referred to, then we say that that’s not an ordinary signification...

80    The asserted ambiguities in the term “community bank” that Bendigo relies on are chiefly directed at how one might define a community. Bendigo submits that the potentially innumerable features that might define a particular community defeats any ordinary signification. However, the primary judge had already said that the community must be defined by a common feature and listed three possible features. The absence of any exhaustive list does not render the expression meaningless. Bendigo also submits that the primary judge’s use of the expression “serves a particular community” in her finding at [233] of the Judgment provides no clear answers as to how and in what way a community bank serves the community. Yet as we have already observed, when read in context, the word “serves” is clearly referring to the provision of banking or financial services.

81    In any event, we do not see any basis for limiting the operation of the TM Act in the way contended for by Bendigo. The practical effect of Bendigo’s argument that “community bank” is not capable of ordinary signification is that, insofar as s 41 of the TM Act prevents the appropriation of ordinary language, its protections are limited to words and phrases that possess a singular meaning in the one context. Having regard to the cases outlined above we consider that such an approach would be unduly restrictive. As CFCU submits, establishing the ordinary signification of words is not so reductive a task as to exclude a word with more than one meaning or a potentially nuanced meaning.

What was the significance of any lack of use of the term “community bank” in Australia as at the Bendigo Priority Dates?

82    Bendigo submits that the evidence of a tightly regulated environment in relation to use of the word “bank”, and lack of use of the term “community bank” in Australia prior to the development of Bendigo’s community bank franchise model in 1997, meant that the term did not have any ordinary meaning as at the Bendigo Priority Dates.

83    At [77]-[92] of the Judgment, the primary judge set out the regulatory framework for use of the word “bank”. This background was informed by the evidence of Associate Professor Paul Martin, who gave evidence as to the history of banks and credit unions in Australia, and Ms Marianne Robinson, a special counsel in the employ of CFCU, and was not in dispute. Relevantly, only ADIs approved as a bank by the regulator had the unrestricted right to use the word “bank” as at the Bendigo Priority Dates.

84    Notwithstanding these restrictions, there was evidence of the term “community bank” being used descriptively – not as a trade mark – as at the Bendigo Priority Dates, including by Bendigo in relation to its own community bank franchise model. For the reasons we have set out in detail below, such use was consistent with the primary judge’s findings on ordinary signification.

85    Perhaps more significantly, the primary judge’s findings did not depend only on evidence of use of the term as at the Bendigo Priority Dates. The primary judge found that the individual words “community” and “bank” had natural English meanings and the conjunctive term had a meaning that flowed from these individual words. Her Honour next looked to determine whether there had been positive use of the term so as to alter the meaning derived from the individual words. In these circumstances, any lack of use could not displace (and might in fact reinforce) this meaning. In our view, this approach was correct.

Did the term “community bank” have a different ordinary meaning?

86    In the alternative to the term “community bank” having no ordinary meaning at all, Bendigo contends that the primary judge ought to have found a different ordinary signification.

Use by Bendigo

87    Bendigo contends that the ordinary signification found by the primary judge had escaped Bendigo itself, as any use by it of the term “community bank” was in reference to a model that Bendigo had created, the essence of which was the sharing of the risk and reward of operating a local branch. However, we do not accept this submission. As the primary judge found (Judgment, [211]), Bendigo used the term “community bank” for its ordinary signification — that is, to convey the meaning of providing banking services to a particular community.

88    The primary judge summarised the evidence given by Mr Robert Hunt, the former Chief Executive Officer and Managing Director of Bendigo, in relation to the development of Bendigo’s community bank franchise model, as well as use by Bendigo of the terms “community bank”, and “community banking”. The model developed in 1997 involved, in essence, a locally-owned company operating and managing a Bendigo branch under a franchise relationship with Bendigo. Mr Hunt gave evidence that, following Bendigo’s conversion to a bank in 1995 and closures of bank branches during the 1990s, he saw an opportunity to implement a branch strategy with a clear point of difference to Bendigo’s competitors. Mr Hunt said that the objectives of the community bank franchise model (as set out at [133] of the Judgment) were:

(1)    to secure branch banking services for participating towns, whether rural, suburban or metropolitan;

(2)    to assist people, local business and communities to better manage and retain locally generated capital and share in the potential growth of the local area;

(3)    to promote investment through stimulating commercial activity, creating local employment opportunities and increasing the confidences of local businesses; and

(4)    to expand Bendigo’s operations across Australia, provide a new revenue stream and extend Bendigo’s service delivery points without the capital costs required by the traditional branch expansion approach.

89    Bendigo’s community bank branch model was to serve the needs of rural and suburban communities by establishing local bank branches in those communities and providing financial services to them. Significantly, while the approach to ownership and management of the branch was new, the banking services provided to customers were the same. Customers at the community bank branches were banking with Bendigo and received the same banking services that they would have received at any other Bendigo branch.

90    In considering how Bendigo then used the term “community bank” in association with this model, the primary judge placed significance on the correspondence between Bendigo and the RBA in 1997 and 1998, which is summarised at [137]-[141] of the Judgment.

91    As observed by the primary judge, the RBA had instructed Bendigo that any use of the term “community bank” or “community bank branch” was to clearly show the relationship between the branch and Bendigo, being the service provider. The RBA did not permit Bendigo to communicate the concept of a bank owned by the community, or to separate the concept of the community bank branch from Bendigo. In response, Bendigo described the brand of its newly developed model to the RBA as “Bendigo Bank – with the local community bank acknowledged on the window and promotional literature”.

92    The primary judge ultimately found (211], Judgment) that Bendigo used the term “community bank” in conformity with the RBA’s requirements. In reaching this conclusion, the primary judge referred to an example such as this:

(Highlighting in original.)

93    This example (and other similar examples) were consistent with other undated signage in the book of usage relied on by Bendigo (‘Usage Book’) such as:

94    There is also evidence that Bendigo used the term “community bank” with reference to a particular local geographic community. In cross-examination, Mr Hunt accepted that the use of “community” in a 1999 prospectus to raise capital for Elwood Community Financial Services Limited was referring to the local community in Elwood. Mr Hunt also said that the word “community” was “a descriptive word”, and a word with “a wide-ranging meaning”. Mr Hunt later sought to explain this as “a word used to describe many things: the community of a place, of members and of people connected to a common purpose” (Judgment, [157]).

95    Accordingly, while Bendigo has now chosen to focus on how the term “community bank” might be used for other connotations or allusive references, particularly in relation to the unique aspects of its community bank franchise model, it is plain that as at the Bendigo Priority Dates Bendigo had used the term to convey the meaning of a provider of ordinary banking services to a particular local community. We therefore consider that Bendigo’s own use of the term “community bank” was consistent with the ordinary signification found by the primary judge.

96    Something must also be said about the significance of the originality (or at least the perceived originality) of Bendigo’s community bank franchise model. The primary judge accepted Mr Hunt’s evidence that Bendigo’s community bank franchise model appeared to be the first of its kind in Australia. The primary judge also accepted that Mr Hunt believed that the terms “community bank” and “community banking” were original and previously unused in Australia to describe this model of banking. Associate Professor Abbott gave evidence to similar effect.

97    However, the primary judge found (Judgment, [209]) that such evidence was not to the point. The primary judge instead focussed on how Bendigo had used the term “community bank”. When this term was used in relation to the community bank franchise model, Bendigo may have intended to use it to allude to the innovative aspects of the model, such as the ownership and management structure and the sharing of risk and reward. Yet the term was used to refer to the ordinary banking services that underpinned the model. On this basis, her Honour found that Bendigo’s use of the term was insufficient to alter the meaning derived from the individual words.

98    We do not see any error here. Notwithstanding the originality of the model, or any originality in use of the term to refer to the model, the term was used in a way that was consistent with its natural English meaning (or at least the natural English meaning of the individual words “community” and “bank”).

Evidence of use of the term by other traders

99    There was also evidence of other traders using the terms “community”, “community branch” and “community bank”. While the primary judge did not expressly analyse the extent to which any use of the term “community bank” by other traders reflected the ordinary signification as found by the primary judge, we are not persuaded that there is any inconsistency.

100    The primary judge summarised the evidence of use by other traders before the Bendigo Priority Dates and concluded (at [161] of the Judgment) that this evidence was somewhat limited. The primary judge identified examples of credit unions and building societies, including CFCU, using the word “community” in their names before the Bendigo Priority Dates. Some of these referred to a geographical community (“Bananacoast Community Credit Union Ltd” and “The Broken Hill Community Credit Union Ltd”), to a community of occupation or workplace (CFCU: previously “S.W.B Family Credit Union Limited”, “SWB Community Credit Union Ltd”, and now “Community First Credit Union Limited”) or a community of faith (“Community and Parish Credit Unions Committee” and “Muslim Community Co-Operative Australia Ltd”). The primary judge also observed that the Heritage Building Society had established the Crows Nest Community Branch in 1999, and there was a trade mark application by Reliance Credit Union Ltd in November 1999 to register “Your Community Banking Provider” as a trade mark in class 36. We note that the application for “Your Community Banking Provider” lapsed on 7 November 2001.

101    In respect of evidence of use after the Bendigo Priority Dates, after correctly noting (at [218]-[220] of the Judgment) the caution to be applied to the consideration of post-priority date usage, the primary judge referred to at least 19 applications for registration of a trade mark in class 36 incorporating the words “community bank” or “community banking”. This included the registration of “Heritage Community Branch” by Heritage Bank Limited (formerly Heritage Building Society) on 20 May 2003 and the registration of “Christian Community Bank” by an individual on 7 August 2002.

102    The primary judge also had regard to extracts from the Parliamentary Inquiry into the Level of Banking and Financial Services in Rural, Regional and Remote Areas of Australia published in 2004 (‘Parliamentary Inquiry Report’). The Parliamentary Inquiry Report outlined the development of earlier community bank models prior to this time, including the opening of Heritage Building Society community bank branches from 1999 onwards.

103    It is worth noting here that much of the evidence of use of the term “community bank” by other traders comes from credit unions and building societies. This is relevant as Bendigo submits that the ordinary signification as found by the primary judge is indistinguishable from a descriptor of the services provided by every branch of every bank, and so the fact that no other bank had ever used the expression in Australia before Bendigo did suggests that the ordinary signification had not occurred to other traders in the industry. However, there was evidence of financial institutions using the expression before and after the Bendigo Priority Dates in relation to the provision of financial services. We consider that this is sufficient to supports the primary judge’s findings as to ordinary signification.

Whether the primary judge’s findings were contrary to CFCU’s case

104    Finally, Bendigo draws attention to the differences between the primary judge’s findings as to the ordinary signification of the term “community bank” and the meanings that were contended for by CFCU, which are said to have suggested notions of ownership structures, profit sharing or giving back to members in some unspecified way.

105    We accept that there are differences between the primary judge’s findings as to the ordinary signification of the term “community bank” and CFCU’s pleaded case. In the further amended statement of claim filed on 23 February 2018, CFCU contends that, as at each of the Bendigo Priority Dates, the term “community bank” meant “a bank which is owned and managed locally and which serves the needs of the local community”. On the one hand, this proposed meaning includes detail about the structure of ownership and management, and goes further than the primary judge’s findings. On the other hand, the use of the word “local” signifies the provision of services to communities that were unified by geography, rather than any other common feature, and is narrower than the primary judge’s findings.

106    Bendigo also refers to the definition of “community bank” in the 2003 edition of the Macquarie Dictionary, being “a bank which is owned and managed locally and which serves the needs of the local community”, that was relied on by CFCU, as well as the evidence of certain of CFCU’s witnesses who referred to ownership structures, profit sharing or other ways of giving back to members.

107    As we have already observed, the existence of more than possible meaning does not mean that a term is not capable of ordinary signification. Further, notwithstanding that the primary judge’s findings did not correspond precisely with CFCU’s pleaded case, it remained open on the evidence for the primary judge to reach the conclusion that she did. We do not consider there to be any error here.

Was the term “community bank” directly descriptive of the Services?

108    Bendigo contends that the primary judge erred in finding that the term “community bank” was directly descriptive of the Services, and instead submits that the term alludes to:

undefined and unspecified concepts or notions of benefit to or interest in a community which might range from a bank which might have an interest in the wellbeing of a community, a bank in which members of a community may participate in a way which benefits the community because of such participation, or a bank which is constituted by or owned by the community in some way which fact of itself will afford some benefit to the community.

109    Bendigo further submits that the ordinary signification of the term “community bank” as found by the primary judge cannot be directly descriptive of the Services, as a finding about the nature of a service provider is not a description of any services at all.

110    In turn, CFCU submits that the primary judge’s use of the expression “directly descriptive” is an application of the “direct reference” test, which derived from the requirements for registrability of a trade mark under the Trade Marks Act 1955 (Cth) (the ‘1955 Act’) and earlier legislation. Section 24(1) of the 1955 Act referred to distinctive marks registrable in Part A. These included:

(d) a word not having direct reference to the character or quality of the goods in respect of which registration is sought and not being, according to its ordinary meaning, a geographical name or a surname.

111    The use of the antitheses “direct reference” and “covert and skilful allusion” has a long history in trade mark authority in determining whether a mark is distinctive and thus registrable. After reviewing earlier UK authorities, the majority of the High Court in Cantarella (at [50]-[52]) described the practical difference between “a word making some covert and skilful allusion to the goods”, which is prima facie registrable, and “a word having a ‘direct reference’ to goods”, which is prima facie not registrable, by reference to two Australian cases decided under the Trade Marks Act 1905 (Cth) (the ‘1905 Act’), Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 (‘Howard’) and Mark Foy’s Ltd v Davies Co-Operative & Co Ltd (1956) 95 CLR 190 (‘Tub Happy’).

112    In Howard, the word “Rohoe” for agricultural implements was not registrable, since it would have appeared as an obvious contraction of “rotary hoe” to persons concerned with those items. In Tub Happy, the words “Tub Happy” for cotton garments were found to be registrable as they had no direct reference to the character or quality of the relevant goods.

113    In Tub Happy, Dixon CJ (agreeing with Williams J), in a passage quoted with approval by the majority in Cantarella at [52], held that the words “Tub Happy” were allusive such that they did not “convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods”: at 195. Chief Justice Dixon described the test for a word having direct reference to the character or quality of the goods as:

…lying in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.

114    The majority in Cantarella (at [52]) also referred with approval to a passage in the reasons of Williams J in Tub Happy at 201, where his Honour illustrated why a covert and skilfully allusive reference to goods does not render a word directly descriptive of goods, as that expression is used in trade mark law. Earlier in Tub Happy at 199, Williams J also discussed the introduction into the 1905 Act of the word “direct” to qualify “reference”, so as to reflect the developed case law which had tended to prevent the registration of words with a merely indirect reference to the character or quality of the goods.

115    CFCU submits it is clear from the Judgment that, in using the words “directly descriptive”, the primary judge understood and intended them to have broadly the same meaning as “direct reference” just as the High Court did in Cantarella. CFCU also submits that there is no relevant distinction of substance between “directly describe” and “contain a direct reference to the character and quality of” the Services.

116    Indeed, at [120]-[124] of the Judgment, the primary judge referred to and relied on authorities that used either or both the words “directly descriptive of” or “direct reference to the character and quality of” in applying the direct reference test. In this context it may be observed that note 1 to s 41(6) of the TM Act as at the Bendigo Priority Dates (which is now note 1 to s 41(4) of the TM Act) identified that trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate, inter alia, the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of goods or services.

117    We accept CFCU’s submission that there is no substantive distinction between the two formulations when considering the application of s 41. In reaching this conclusion, it is useful to return to the principle that necessitates the test. In Cantarella, the majority of the High Court explained (at [57]) that directly descriptive names:

…are not prima facie suitable for the grant of a monopoly, namely because their use as a trade mark ‘will rarely eclipse’ their ordinary signification; and traders may legitimately wish to use such words in connection with their goods because they are inherently adapted to be used in reference to those goods.

118    We consider that the term “community bank” directly refers to both the recipients of the Services and the nature of the provider of the Services. There may be further possible meanings of the term “community bank” that convey covert, skilful or metaphorical allusions to undefined and unspecified concepts or notions. Yet the words carry a natural English meaning that is apt to refer to attributes of the Services. It is apparent from the primary judge’s reasons that she found, to paraphrase Tub Happy, there was a probability of ordinary persons understanding the words Community Bank, in their application to the Services, as describing or indicating or calling to mind either their nature or some attribute they possess. Given our conclusions above in relation to Bendigo’s own use of the term “community bank” to describe the provision of financial services to communities, we are also persuaded that the term “community bank” was directly descriptive of the Services, or directly referred to a quality or some other characteristic of the Services as at the Bendigo Priority Dates. For this reason, the term “community bank” is prima facie not suitable for registration.

119    It follows that if, as we see it, the primary judge used the words “directly descriptive” to invoke the direct reference test as set out in the abovementioned authorities, then there was no error. In the event that we are wrong on this point, we would nonetheless uphold the primary judge’s findings on the alternative basis set out in Ground 1 of the notice of contention.

Evidence of other traders’ legitimate use or desire to use the term

120    Bendigo contends that the primary judge erred in fact in finding (Judgment, [215]) that there was limited evidence of other traders’ use or desire to use the term “community bank” as at the Bendigo Priority Dates.

121    Bendigo submits that there was no evidence of use by third parties of the term “community bank” as at the Bendigo Priority Dates. However, as we have already found above, there was evidence of other traders using the word “community” and one instance of a trade mark application including the word “community banking”. In addition, evidence of actual use by other traders is not strictly required for the purpose of s 41(3) of the TM Act. The focus is instead on the likelihood of other traders having a legitimate desire to use the trade marks: see Clark Equipment at 514-515.

122    Bendigo next submits that the restricted use of the word “bank” meant that the first credit union to call itself such did not occur until 2011 after legislative changes in 2010. We accept that there were regulatory restrictions on the use of the word “bank” at the relevant times. However, as observed by the primary judge, building societies and credit unions were permitted to use the expression “banking” in relation to banking activities from the year 2000. We therefore do not consider the regulatory environment to have been so restrictive as to preclude any desire by other traders to use the term “community bank” as at the Bendigo Priority Dates.

123    We agree with the primary judge’s finding (Judgment, [161]) that there was “somewhat limited” evidence of other traders’ use and desire to use the term “community bank” as at the Bendigo Priority Dates. The outstanding question is whether such use or desired use was legitimate.

124    In respect of the evidence prior to the Bendigo Priority Dates, Bendigo submits that Heritage Building Society had only adopted its “community branch” after Bendigo had launched its model and shared the concept with the Heritage Building Society.

125    This was noted by the primary judge but her Honour nonetheless found (Judgment, [216]) that, with reference to the Parliamentary Inquiry Report, as at the Bendigo Priority Dates, the Heritage Building Society had established a model for community banking and was providing community banking services. We therefore consider there to have been a sufficient basis to conclude that any use or desired use of the term “community bank” by Heritage Building Society was legitimate.

126    In respect of the evidence subsequent to the Bendigo Priority Dates, Bendigo submits that the primary judge erred in not giving sufficient consideration to the motives of the trade witnesses, being Mr Joce Tancevski (Chief Executive Officer of CFCU) and Mr David Andrew Taylor (Chief Executive Officer and Director of G&C Mutual Bank Ltd (‘G&C Mutual’)).

127    However, the primary judge set out her consideration of the motives of Mr Tancevski and Mr Taylor at [223]-[230] of the Judgment and expressly had regard to the evidence now relied on by Bendigo to establish improper motive. The primary judge observed that Mr Tancevski had said CFCU wished to have a monopoly in “Community First Bank” if it was able to register the trade mark, but did not say that he wished to preclude others from registering similar marks. The primary judge also observed that G&C Mutual had formed the “coalition of the willing” or “G8” group and that the purpose of this group (which CFCU and six other businesses participated in) was to obtain registration of the term “community bank” and use the term in association with existing trade names to describe their own services. Significantly, the primary judge found (Judgment, [225]) that the “coalition of the willing” did not wish to take advantage of Bendigo’s reputation in community bank branches, and accepted (Judgment, [230]) unchallenged evidence that the group did not intend to prevent Bendigo from using the term “community bank”.

128    The primary judge had the advantage of hearing the oral evidence of both of these witnesses and forming a view as to their motives. We do not see any error in finding that there was no evidence of improper purpose on the part of Mr Tancevski and Mr Taylor. We therefore consider that it was correct to find there was evidence of a legitimate desire by other traders to use the term “community bank” prior and subsequent to the Bendigo Priority Dates.

129    It is here convenient to consider one specific argument of Bendigo. It was submitted that the primary judge did not consider the term “community bank” as having any elusory meaning, even assuming the term has descriptive (or even significantly descriptive) qualities. So Bendigo contends that even if the term “community bank” is apt to describe financial services in the way decided by the primary judge, it was a term apt to allude to a sense of social or other undefined benefit to a community which is not descriptive of anything in particular. Bendigo in this regard referred to the concepts of “community of interest”, “community services”, “community values” and the like.

130    Specific reference was made to the decision of Finn J in Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257 (‘Austereo’) at [38] and particularly at [39], and the decision of Re Application of J&P Coats Ltd [1936] 2 All ER 975 (‘Coats’) at 984-985.

131    In Austereo, Finn J stated:

[38]    …as Note 1 to s 41(6) of the Act suggests— and it is said to reflect “the trend of relevant judicial authority”: Ocean Spray Cranberries Inc at 589:

Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services….

Nonetheless words which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish: [Coats at 984-985]. Distinctly, that a descriptive statement is commonly associated with a particular trader’s goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader’s goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied: [Coats at 984-985].

[39]    Fifth, a descriptive word may to a degree be inherently adapted to distinguish because the description itself involves an unfamiliar, obsolete, unexpectedly evocative or purely emotive usage: cf [Coats at 984-985]; [Tub Happy] at 194.

132    Then, in Coats, Lord Wright MR, in dealing with the trade mark of the name “sheen” in relation to the goods “machine twist” (mercerised threads or twist used in sewing machines) stated (at 978-979, 984-985):

…We have, from the point of view of the public, the affidavit of a buyer—if I may refer to one of the many affidavits which have been produced from every corner of the country—a Miss Sanderson Hutton, of Haddington. She says she has been

accustomed to purchase for domestic use machine twist of the merchandise of the applicants J & P Coats, Ltd,. under their “sheen” spool ticket which I have used for fifteen years and another variety of their “sheen” machine twist which is sold under their “super sheen” spool ticket which I have used for four years.

That is only one of an enormous number of others showing that in the public mind, as buyers of this particular article, the word “sheen”, is, as this deponent says:

Used by J. & P. Coats, Ltd., as trade marks to distinguish their machine twist from that of other manufacturers or merchants.

[…]

The registrar has referred to some cases in dictionaries, trade dictionaries and specifications in which the word is used, but the evidence is overwhelming that it is not the ordinary or the natural word which in the trade would be used. The word “lustre”, on the other hand, is a very common term in the trade, and there has been produced an enormous number of sample marks in which the word “lustre” is used, but no mark in which the word “sheen” is used. I need not refer to that type of evidence any more because it is so clear and so overwhelming in his case that, as I have already said, it has not been the subject of any contest here. The registrar pronounced that the mark should not be registered. That is the issue to be decided here.

[…]

I do not think, dealing with the particular circumstances of this case, as I must, as a practical question, that any such argument is made out. The word “sheen” in this connection is clearly not a merely laudatory word like “perfection” or “best” or “classic” or “universal” or “artistic”. To use the words which are the subject of discussion in Sharpe Ltd v Solomon Brothers, Ltd, they are words which describe the character of the goods, but they are not the only or natural words which would be chosen for the purpose. With regard to the Orwoola case, referred to in the Crosfield case from which I have just read, “orwoola” was a simple description of the character of the goods, apparently not correct, with the laudatory observation that the goods were all wool, the words being mis-spelt. There you had an attempt to monopolise the natural description of woollen goods—that and nothing else. In the same way the word “diamine” was rejected as being a possible trade mark because it simply described the ordinary chemical composition of an article of ordinary commerce; similarly the word “gramophone” was not admitted to registration as a trade mark because it simply describe what we all know as a gramophone with a disc. It is perfectly true that in the gramophone case there was evidence that in the trade it was necessarily identified with the products of the applicants; but against that was the admitted fact that in the eyes of the public it meant and only meant, a machine whether made by the applicants or not. The word “sheen” in this case does not appear to me to assimilate itself to any of those categories. As I have already said, so far as the trade is concerned, the natural word to use and the word normally and habitually used in connection with glossiness is “lustre”. Therefore, the use of the word “sheen” is something special; it is not merely a colour description, a description of something by a mere colour such as “blue” or any word of that sort; it is the peculiar use of a word which is rather poetic and obsolete or in unfamiliar use and which is not customary in this particular connection.

(Citations omitted).

133    Lord Justice Slesser also stated (at 987-988):

In my opinion the word “sheen” is not such a word simply descriptive of the quality of these goods. It may be that in one view these goods may be said to possess a sheen; but it is not in my view simply descriptive of the quality and it has not a simple and easy, primary meaning. The word “sheen” for the most part has been favoured by the poets, so I gather from a perusal of MURRAY’S NEW ENGLISH DICTIONARY; it appears in Burns, in Byron, in Coleridge and in Shelley, and as we know, it finds expression in the well-known hymn “Jerusalem the Golden,” where it says: “The pastures of the blessed are decked in glorious sheen.” The word “sheen” is in my opinion on the whole an artistic and beautiful word, and not a word in so much common and primary use that it can be said to have such an easy and primary meaning that it is almost impossible to establish that it has lost its primary meaning. I think on the evidence this word has therefore lost its primary meaning.

134    The important point to observe is that everything will depend on the circumstances of the case and the evidence before the Court. The word “sheen” was known and used in the trade only to describe the goods in question; the word “lustre” was generally applied to others. The evidence before the primary judge distinguishes the approach taken in Coats. In Coats, the Court took the view (based on the evidence) that to allow the registration of the word “sheen” would not unduly inhibit competitors. The primary judge (based on the evidence) took a different view, (having regard to the rather more prosaic words presently under consideration) as to the registration of the term “community bank”.

135    For the above reasons, we do not consider that the primary judge erred in finding that the Bendigo Community Marks were not to any extent inherently adapted to distinguish the Services from the services of other persons within the meaning of s 41(3) of the TM Act as at the Bendigo Priority Dates.

136    For these reasons, Grounds 1 to 6 of the appeal should be dismissed.

APPEAL GROUND 7: S 41(5) OF THE TM ACT

137    Ground 7 of the notice of appeal contends in the alternative that the primary judge erred in not finding that the Bendigo Community Marks were to some extent inherently adapted to distinguish the Services and did distinguish the Services pursuant to s 41(5) of the TM Act.

138    The application of s 41(5) of the TM Act requires a conclusion that the Bendigo Community Marks were to some extent inherently adapted to distinguish the Services. For the reasons set out above, we also do not reach this conclusion and it is therefore unnecessary to consider the question of acquired distinctiveness within the meaning of s 41(5) of the TM Act.

139    For these reasons, Ground 7 of the appeal should be dismissed.

APPEAL GROUNDS 8 TO 13: S 41(6) OF THE TM ACT

140    Grounds 8 to 12 of the notice of appeal relate to the extent of use of the Bendigo Community Marks by Bendigo as at the Bendigo Priority Dates. Given our finding in relation to Ground 7 of the notice of appeal and the application of s 41(5) of the TM Act, Grounds 8 to 12 of the notice of appeal are only relevant for the purpose of applying s 41(6) of the TM Act. It is therefore convenient to deal first with Ground 13 of the notice of appeal.

141    Ground 13 of the notice of appeal relates to the application of s 41(6) of the TM Act and is informed by Grounds 8 to 12 of the notice of appeal. Ground 13 contends, in the alternative, that if the term “community bank” was not inherently adapted to distinguish the Services, the primary judge erred in failing to find that because of the extent to which Bendigo had used the Bendigo Community Marks as trade marks before the Bendigo Priority Dates, the Bendigo Community Marks did distinguish the Services within the meaning of s 41(6) of the TM Act. The notice of appeal refers to and repeats the particulars to Grounds 8 to 12 of the notice of appeal.

142    Ground 8 of the notice of appeal contends that the primary judge erred in fact in finding that the term “community bank” was not used by Bendigo on its own as at the Bendigo Priority Dates and was instead incorporated into a composite phrase.

143    The notice of appeal provides the following particulars:

(i)    The Usage Book (as defined at [243] of the Judgment) provides evidence of use of the Bendigo Word Mark as a trade mark in the manner understood from Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407.

(ii)    The evidence before the primary judge included extensive evidence of use of the Bendigo Word Mark (Judgment at [244]-[246], [415]-[431]) and the extent of Bendigo's business conducted by its Community Bank franchisees (Judgment at [247]-[251], [432]-[433]).

(iii)    This finding is inconsistent with the primary judge’s finding (at [275] of the Judgment), “I accept that from time to time ‘community bank’ was used independently in the sense that there was no reference to Bendigo or it was in a form that did not constitute use of the Bendigo Composite Mark despite the presence of the B Bendigo Mark”.

(iv)    This finding is inconsistent with the primary judge’s finding at [276] of the Judgment where her Honour accepts use “as a trade mark”.

(v)    Having accepted evidence that the Bendigo Word Mark was used on its own by Bendigo before the Priority Dates, the primary judge erred in not having regard, or sufficient regard, to such evidence to demonstrate that the Bendigo Word Mark had acquired a reputation in Australia.

144    Ground 9 of the notice of appeal contends that the primary judge erred in fact in finding that Bendigo’s use of the term “community bank” before August 2001 would not have appeared to consumers of the Services as possessing the character of a brand because in almost all cases what was presented and used was the Bendigo Composite Mark and not the Bendigo Word Mark as a trade mark.

145    The notice of appeal refers to and repeats the particulars to Ground 8 of the notice of appeal, and provides the following further particular:

The primary judge disregarded references to the Bendigo Word Mark in press material (at [267] of the Judgment) contrary to Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159.

146    Ground 10 of the notice of appeal contends that the primary judge erred in determining that the use of “community bank” in conjunction with other words and symbols precluded a finding that “community bank” was used as a trade mark in such usages and in failing to consider the prominence of the use of the words “community bank” in such usages and in failing to determine that by reason of such prominence, such uses of ‘community bank” constituted use of those words as a trade mark.

147    Ground 11 of the notice of appeal contends that the primary judge erred in fact in finding that Bendigo’s uses were not sufficient to establish use of the Bendigo Community Marks as trade marks before the Bendigo Priority Dates, and that in the vast majority of cases there is a reference to Bendigo, or use of the B Bendigo Mark or the Bendigo Bank Mark in close proximity to the Bendigo Word mark.

148    The notice of appeal refers to and repeats the particulars to Ground 8, and provides the following further particulars:

(ii)    The finding assumes a substantial and significant reputation in the "Bendigo Bank" mark itself whereas the evidence was that Bendigo Bank Limited was only incorporated in 1995.

(iii)    The finding fails to take into account or give sufficient weight to evidence before the primary judge that Bendigo had been using ‘community bank’ since 1998 and that the ‘Community Bank Mark’ was only three years younger than the "Bendigo Bank" mark (Judgment at[76]) and that there were 47 Community Bank branches opened before 13 August 2001 (Judgment at [248]), such that the "Bendigo Bank” mark was not, or not to a significant extent, better known than the Bendigo Word Mark and the use of both the "Bendigo Bank" marks and Bendigo Word Mark on promotional material does not mean that the Bendigo Word Mark was not used as a trade mark or capable of developing an independent reputation as at the Priority Dates.

(iv)    The findings give insufficient weight (or no weight) to the evidence that showed that the launch of a Community Bank branch was a significant good news story, particularly in light of dramatic and widespread bank closures throughout Australia in the late 1990s and early 2000s.

149    Ground 12 of the notice of appeal contends that the primary judge erred in finding that the Bendigo Community Marks are not of themselves sufficient to indicate the origin of the Services in Bendigo because the RBA required that the connection between the trade marks and Bendigo be made apparent.

150    The notice of appeal provides the following particulars:

The finding rejected or failed to take into account, and, or in the alternative, failed to give appropriate weight to:

(i)    correspondence from the RBA ([139] of the Judgment) where the RBA makes it clear that it has no objection to use by Bendigo of the names ‘community branch’ or ‘community bank’;

(ii)    the letter to the RBA sent on 6 April 1998 ([140] of the Judgment), where it is clear that Bendigo is drawing a distinction between trade marks, including ‘Community Bank’, and the trading name. The accompanying proposed format is clearly the proposed trading name; and

(iii)    the fact that it was never put to Mr Hunt that there had been no use by Bendigo of the Bendigo Word Mark or the Bendigo Device Mark and he was not challenged on issues about usage as at 2001. While this is noted by the primary judge at [255] it is considered no further.

Consideration

151    The key question here is whether, objectively, the term “community bank” was used to distinguish the Services. Use well past the Bendigo Priority Dates cannot confer factual distinctiveness as at the Bendigo Priority Dates within the meaning of s 41(6)(a) of the TM Act, nor will uses which are not trade mark uses.

152    Bendigo contends that the Usage Book comprised many and varied examples of use of the Bendigo Word Mark before and after the Bendigo Priority Dates. However, attention must be paid to the dates and manner of these asserted uses. Generally, we observe that there are many undated documents in the Usage Book and relatively few examples dated prior to the Bendigo Priority Dates.

153    In respect of the manner of the asserted uses, there are two central issues in dispute:

(1)    whether the term “community bank” used in conjunction with or in close proximity to the B Bendigo Mark or other Bendigo branding was use of the Bendigo Word Mark; and

(2)    further or in the alternative, whether there was sufficient evidence of use of the Bendigo Word Mark on its own so as to distinguish the Services as at the Bendigo Priority Dates.

Use of the term “community bank” with the B Bendigo Mark or other Bendigo branding

154    As we have already observed, the primary judge found that, in most cases, the instances of use relied on by Bendigo were in fact use of the Bendigo Composite Mark. The Bendigo Composite Mark was the most common type of use made by Bendigo with respect to its shop signage and promotion materials. Even where the use was not of the Bendigo Composite Mark, the primary judge found that the presence of the B Bendigo Mark, the Bendigo Bank Mark or other Bendigo indicia made it difficult to conclude that “community bank” alone had become distinctive of the Services: Judgment at [260] and [276].

155    The primary judge recognised that there can be double trade mark use. However, her Honour found that this was not the nature of Bendigo’s use of the term “community bank” alongside the other marks. Rather, the B Bendigo Mark and the Bendigo Bank Mark had the effect of substantially diluting any trade mark significance that may attach to the words “community bank” by themselves. In this regard the primary judge found (at [276]):

…having regard to the totality of the evidence, those uses are not sufficient to establish use of the Bendigo Community Marks as trade marks. Those uses do not distinguish the Services from the services of other traders in that they are not of themselves sufficient to indicate the origin of the Services in Bendigo. This is because even while there is purported use of the Bendigo Word Mark as a trade mark, in the vast majority of cases there is reference to Bendigo, or use of the B Bendigo Mark or “Bendigo Bank” in close proximity to that former mark. It is unlikely, if not impossible, that a typical consumer exposed only to the Bendigo Word Mark before August 2001, in isolation of the indicia of Bendigo that typically accompanied the mark, would be caused to associate the Services with Bendigo.

156    We agree with the primary judge’s conclusions for the following reasons.

157    In Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 86 IPR 1 (‘Nature’s Blend’) (upheld on appeal in Nature’s Blend Pty Ltd v Nestle Australia Ltd [(2010) 272 ALR 487) Sundberg J held (at [40]):

…the effect of the words “luscious Lips” on consumers is diluted by the prominence of the well known mark “ALLEN’S” on both the front and back of the packaging, along with the mark “NESTLE” appearing on the back of the packaging. These two registered marks perform the role of distinguishing CFCU’s confectionary from that of others. In addition, the product name “RETRO PARTY MIX” appears in large font on the front and the back of the product. I accept that, in some circumstances, there may be trade mark use despite other marks appearing on the product: see Anheuser-Busch 56 IPR 182. However, in my view, this case is distinguishable from that type of case. In Anheuser-Busch 56 IPR 182 the infringing mark “Budweiser” was the most prominent word on the label. That is not the case here. In this case, the registered marks “ALLEN’S”, and to a lesser extent “NESTLE”, are prominent especially when contrasted with the positioning and use of the words “luscious Lips”. See Chocolaterie Guylian NV 258 ALR 545.

158    In Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (‘Shell’) Kitto J held (at 425):

With the aid of the definition of “trade mark” in s. 6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which Bendigo was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and Bendigo. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?

159    In the present case, to adopt the words of Kitto J in Shell, the words “community bank” were presented in a setting where those words would not have appeared to the viewer as possessing the character of a brand for the purpose of indicating a connection in the course of trade. That connection was instead accomplished by the Bendigo branding. It was the Bendigo branding (and not the term “community bank”) that was used to distinguish the Services from those of other traders and to clearly indicate a connection between the Services and Bendigo.

160    The primary judge’s conclusion as to Bendigo’s use of the term “community bank” and the requirements of the regulator was informed by the correspondence summarised at [137]-[141] of the Judgment. In respect of this correspondence, Bendigo contends that the primary judge failed to take into account or give appropriate weight to two matters.

161    Bendigo first draws our attention to the fact that the RBA made it clear in the correspondence that it had no objection to Bendigo using the terms “community branch” or “community bank”. It is true that the RBA did not object to use of these terms. However, such use was conditional on Bendigo making “clear that all business done in the branch is conducted for the account of Bendigo Bank” and ensuring that “depositors are aware that their protection under the Banking Act is dependent upon the assets of Bendigo Bank” (see letter at [139] of the Judgment). It is these conditions, or at least Bendigo’s response to these conditions, that contributed to Bendigo’s failure to use the term “community bank” as a trade mark.

162    Bendigo next submits that there was a distinction in the correspondence between the trading name and the trade marks, and that the following proposed format for signage only related to use of the trading name:

163    However, such a distinction only further illustrates the difference between the use of the term “community bank” in a composite phrase and use as a trade mark. Moreover, while such a distinction might have been made in the correspondence, the examples of signage in the Usage Book that are relied on by Bendigo are consistent with this trading name format. For example:

This signage clearly reflects the trading name format that was proposed to the RBA.

164    We will now turn to consider the prominence of the term “community bank” when used in conjunction with the B Bendigo Mark, the Bendigo Bank Mark or other Bendigo branding. Bendigo submits that the primary judge failed to consider the prominence of the term “community bank” when used in this way. However, it is apparent from the primary judge’s consideration of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205 (‘Accor’) that she did consider the overall impression arising from such use: see [256], [269]-[274] of the Judgment. In any event, it is apparent from the primary judge’s reasons that she would have determined this question in favour of CFCU. We reach the same conclusion.

165    There are some features of Bendigo’s use of the term “community bank”, and select instances in the Usage Book, which go some way to suggesting prominence of the term “community bank”.

166    In almost all of the marketing and promotional material in the Usage Book (which is mostly either undated or dated after the Bendigo Priority Dates) the term “community bank” is in emboldened lettering. This is consistent with the requirements set out in Bendigo’s “Proofreading guidelines” from August 2006 which provided that franchisees must use the term “community bank” in bold followed by the symbol ® and the words “branch, project, concept, model” or similar: see [149] of the Judgment.

167    There are also some instances in the Usage Book where the term “community bank” is in a larger font size than the words in the other marks. This is one such example, being a flyer announcing the opening of the Minyip and Rupanyup branches in Victoria in 1998:

168    In addition, there are some instances where the term “community bank” is at a distance from the B Bendigo Mark or other mark. This is an undated prospectus to raise support for the establishment of a community bank branch in Barwon Heads in Victoria.

169    However, in the majority of instances, the words in the other marks are in close proximity to and of an equal or larger sized font. For example, this is a flyer dated 21 February 2003 for Bendigo’s MasterCard product:

170    This flyer reflects Bendigo’s typical use across branch signage, promotional and other materials before and after the Bendigo Priority Dates. Significantly, as observed by the primary judge at [142] of the Judgment, Mr Hunt had initially described this flyer as “co-branding” but later conceded in cross-examination that this was an example of a unitary brand corresponding to the Bendigo Composite Mark. In such instances, we are not persuaded that the words “community bank” are the most prominent words in the material (see discussion of Nature’s Blend above), nor that the term possesses the character of a brand.

171    Finally, Bendigo submits that the primary judge erred in focussing on the use of the Bendigo Bank mark in conjunction with the Bendigo Community Marks and in assuming a dominant reputation the “Bendigo Bank” mark itself.

172    To the extent that this submission suggests that her Honour took into account a general notion of reputation in the words “Bendigo Bank” in her analysis, we disagree. It is apparent from reading the judgment in section 4.1.3.3 that the primary judge was focussed on the extent to which the use of the Bendigo Community Marks in fact distinguished the Services. In that context, her Honour found as a matter of fact that the words “community bank”, when seen in the way that they were used in conjunction with other marks, would not have had the character of a trade mark, having regard to the proximity of those words which themselves provided a clear designation of origin in the form of the words “Bendigo Bank”. We see no error in that approach.

Use of the term “community bank” on its own

173    Bendigo contends that the primary judge failed to have sufficient regard to instances of use where the term “community bank” has been used on its own. We do not accept this contention.

174    First, Bendigo submits that the primary judge’s findings at [211] of the Judgment are inconsistent with [275] of the Judgment. It is useful to set out the relevant findings here:

[211]    The way in which Bendigo in fact used the term “community bank” is also telling in the sense that it described the provision of financial services to a local community. As at the Priority Dates that term was not used on its own. Rather, as required by the RBA, it was incorporated into a composite phrase…

    […]

[275]    I accept that from time to time “Community Bank” was used independently in the sense that there was no reference to Bendigo or it was in a form that did not constitute use of the Bendigo Composite Mark despite the presence of the B Bendigo Mark. An example of the former is the article at [244(4)] titled “Dick Smith to help us celebrate”. That article, published in 2001, reports that “well known Australian Dick Smith has accepted an invitation to officially open the Boorowa Community Bank on Saturday 12 May”. The article then discusses Mr Smith’s career and achievements. It makes no reference to Bendigo. An example of the latter is the flyer for the opening of the “Community Bank[s]” at Rupanyup and Minyip…

175    In response, CFCU submits that [275] of the Judgment ought to be read in the context of the next paragraph [276], which we have set out above (at [155]).

176    When read in context, we accept CFCU’s submission that at [211] of the Judgment the intention of the primary judge was to convey that the term “community bank” was not used on its own as a trade mark as at the Bendigo Priority Dates. It is apparent from the remainder of the primary judge’s reasons, including at [275]-[276] of the Judgment, that she recognised there were instances before the Bendigo Priority Dates where the term “community bank” was used independently. The question was whether such instances were sufficient to establish use of the Bendigo Community Marks as trade marks.

177    Secondly, Bendigo submits that the primary judge failed to consider evidence of references to the Bendigo Word Mark in the press material. It may be accepted that a large part of the Usage Book is comprised of press clippings and other evidence of media coverage in relation to Bendigo’s community bank franchise model.

178    Bendigo relies on Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (‘Tivo’) (upheld in Vivo International Corporation Pty Ltd (2012) 294 ALR 661), which concerned assessment of reputation for the purpose of s 60 of the TM Act. In Tivo, Dodds-Streeton J held (at [441]):

As TiVo submitted, some articles incorporated cross-reference to treatment of TiVo in other media. While the exposure may have entirely eluded some members of the public, it is probable that considerable numbers saw references in various media on more than one occasion and a significant number imbibed or acquired a recognition of the TiVo trade mark. The vast volume and the character of the exposure was in no way comparable to the isolated and fleeting exposures the subject of Hansen Beverage. Rather, it was so extensive and significant as to constitute, consistently with the approach in McCormick, notwithstanding the absence of consumer surveys or expert evidence in relation to its impact, a sufficient basis, fortified by the users group’s activities, to infer awareness, knowledge and (if it be necessary) favourable estimation of the TiVo trade mark and the TiVo product in a significant number of members of the public.

179    Bendigo also refers to [267] of the Judgment, where the primary judge held:

A review of the articles relied on by Bendigo, some of which are extracted in these reasons, shows that the authors of the articles often used the term “community bank” not in its capitalised form but as a descriptor, as Mr Hunt agreed; the term was also used in conjunction with “Bendigo”, for example “Bendigo Community Bank” branch or branches; and the articles included photographs which showed the B Bendigo Mark and/or the signage at a particular branch which was in the form of the Bendigo Composite Mark. As Mr Hunt accepted, Bendigo had no control over the content of these articles. The articles taken as a whole do not establish use of the Bendigo Word Mark as a trade mark so as to distinguish the Services as at the Priority Dates. At best the articles show that from time to time the author would use the capitalised term “Community Bank” as opposed to the descriptor “community bank” when referring to a branch. But there was no consistency in use nor could it be said that as time passed there was more use of “Community Bank”, independent of reference to Bendigo, when referring to the franchised branches.

180    In our view, it is plain from the primary judge’s findings at [267] (as well as [446]) that she did in fact have regard to the use of the term “community bank” in the press material. At [267] and [446] of the Judgment, the primary judge found that many of the articles relied on by appellant used the term “community bank” in a descriptive sense and there were only a few instances where the term was used without reference to Bendigo. We agree with this finding. It follows that the facts in the present case are readily distinguished from those in Tivo, where there had been extensive press coverage of the relevant trade mark.

181    Aside from the press coverage, there are very few instances of independent use. One instance of use relied on by Bendigo is of the Diamond Creek Community Bank Stadium established in 2012:

182    However, this is not an example of use with respect to the Services or class 36 services. The example is therefore not relevant for the purpose of the s 41(6) assessment.

Other matters

183    There are two final matters to deal with for Grounds 8 to 13 of the notice of appeal.

184    First, while it had appeared to be common ground between the parties in the court below that the Bendigo Device Mark had not been used prior to its priority date (see [259] of the Judgment), Bendigo now relies on the same alleged instances of use of the Bendigo Word Mark as being use of the Bendigo Device Mark. Bendigo submits that use of the Bendigo Word Mark is effectively use of the Bendigo Device Mark with alterations that do not substantially affect the identity of the mark within the meaning of s 7(1) of the TM Act.

185    Given our conclusions in relation to the lack of use of the Bendigo Word Mark, it is unnecessary to determine this question.

186    Secondly, Bendigo, in particular (iii) to Ground 12 of the notice of appeal, says it ought to have been put to Mr Hunt that there had been no use by Bendigo of the Bendigo Community Marks. This was noted by the primary judge at [255] of the Judgment. However, in our view is not a matter material to our consideration of the issues raised in Ground 12 of the notice of appeal.

187    We are therefore of the view that there was no error in the primary judge’s evaluation that Bendigo had not used the Bendigo Community Marks as trade marks before the Bendigo Priority Dates so as to distinguish the Services within the meaning of s 41(6) of the TM Act.

188    For these reasons, Grounds 8 to 13 of the appeal should be dismissed.

NOTICE OF CONTENTION GROUNDS 2 TO 5: SS 59 AND 92(4) OF THE TM ACT

189    Ground 2 of the notice of contention contends that the primary judge erred in not finding that Bendigo did not have an intention to use the Bendigo Community Marks for the purpose of s 59 of the TM Act. Grounds 3 and 4 contend that the primary judge erred in finding that CFCU had not discharged its onus to establish a prima facie case and ought to have found that the onus had shifted to Bendigo and Bendigo had failed to discharge that onus.

190    Ground 5 of the notice of contention contends that the primary judge ought to have found that the Bendigo Community Marks should have been removed from the Register for non-use pursuant to s 92(4) of the TM Act. These grounds all rely on the same particulars.

191    Having regard to our conclusion that the primary judge did not err in her conclusions on the basis of s 41 TM Act, it is unnecessary for us to consider these aspects of the notice of contention, which raise an additional basis upon which it is said that the Bendigo Community Marks should not remain on the Register: see Boensch v Pascoe (2019) 375 ALR 15 at [7]-[8] (Kiefel CJ, Gageler and Keane JJ)

APPLICATION FOR LEAVE GROUNDS 1 TO 4: S 60 OF THE TM ACT

192    Ground 1 of the draft notice of appeal contends that the primary judge erred in finding that Bendigo did not have a reputation in the Bendigo Word Mark sufficient to establish the ground of opposition under s 60 of the TM Act and ought to have found that the Bendigo Word Mark had acquired a reputation in Australia prior to the CFCU Priority Date. Ground 1 is informed by Grounds 2 to 4 of the draft notice of appeal.

193    The draft notice of appeal provides the following particulars to Ground 1:

(a)    The Usage Book […] provides evidence of use of the Bendigo Word Mark as a trade mark in the manner understood from Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407.

(b)    The evidence before the primary judge included extensive evidence of use of the Bendigo Word Mark (Judgment at [244]-[246], [415]-[431]) and the extent of Bendigo's business conducted by its Community Bank franchisees (Judgment at [247]-[251], [432]-[433]).

(c)    This finding is inconsistent with the primary judge’s finding (at [275] of the Judgment), “I accept that from time to time ‘community bank’ was used independently in the sense that there was no reference to Bendigo or it was in a form that did not constitute use of the Bendigo Composite Mark despite the presence of the B Bendigo Mark”.

(d)    This finding is inconsistent with the primary judge’s finding at [276] of the Judgment where her Honour accepts use “as a trade mark”.

(e)    Having accepted evidence that the Bendigo Word Mark was used on its own by Bendigo before the Priority Date, the primary judge erred in not having regard, or sufficient regard, to such evidence to demonstrate that the Bendigo Word Mark had acquired a reputation in Australia as at the [CFCU] Priority Date (Judgment at [415]-[416], [421]-[422], [425]-[426], [440]-[441], [446]).

194    Ground 2 of the draft notice of appeal contends that the primary judge erred in finding that the use of the Bendigo Word Mark in combination with the Bendigo Composite Mark, the B Bendigo Mark or indicia such as “the identifiable Bendigo colours: maroon and yellow” precluded a finding that the Bendigo Word Mark had acquired a reputation as at the CFCU Priority Date.

195    The draft notice of appeal refers to and repeats the particulars to Ground 1 of the draft notice of appeal and provides the following further particulars:

(b)    The primary judge disregarded references to the Bendigo Word Mark in press material (at [446] of the Judgment) contrary to Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159.

(c)    The finding assumes a substantial and significant reputation in the [Bendigo Composite Mark, the Bendigo Bank Mark and the B Bendigo Mark (‘Bendigo Marks’)] whereas the evidence was that Bendigo Bank Limited was only incorporated in 1995, it merged with Adelaide Bank Limited in 2007, and in 2008 it changed its name to its current name, Bendigo & Adelaide Bank Limited (see [73] of the Judgment).

(d)    The finding fails to take into account or give sufficient weight to evidence before the primary judge that Bendigo had been using ‘community bank’ since 1998 and that the [Bendigo Word Mark] was only three years younger than the Bendigo Marks (Judgment at [76]), and that the Community Bank branch network makes up a significant proportion of Bendigo's overall network of bank branches such that:

(i)    the Bendigo Marks were not, or not to a significant extent, better known than the Bendigo Word Mark and the use of both the Bendigo Marks and Bendigo Word Mark on promotional material does not mean that the Bendigo Word Mark was not capable of developing an independent reputation as at the Priority Dates (cf Judgment [441], [443]); and

(ii)    use of the Bendigo Indicia in combination with the Bendigo Word Mark may just as easily be seen to be use of that branding in relation to the Bendigo Word Mark as use in relation to the Bendigo Marks (cf Judgment at [442]).

(e)    The finding fails to take into account or give sufficient weight to evidence of the use of the Bendigo Word Mark in circumstances where Community Bank branches comprised 59% of Bendigo's branch network, and the primary judge ought to have found that the prevalence of Community Bank branches meant that the Bendigo Word Mark had acquired a reputation in Australia as at the [CFCU] Priority Date (Judgment at [432]-[436], [444]-[445]).

(f)    The findings give insufficient weight (or no weight) to the evidence that showed that the launch of a Community Bank branch was a significant good news story, particularly in light of dramatic and widespread bank closures throughout Australia in the late 1990s and early 2000s.

196    Ground 3 of the draft notice of appeal contends that the primary judge erred in applying a “dominant cognitive cue” test in determining that despite the use of the Bendigo Word Mark in association with other words or symbols, the Bendigo Word Mark had not acquired a reputation as at the CFCU Priority Date.

197    Ground 4 of the draft notice of appeal contends that, having regard to the existence of the reputation of the Bendigo Word Mark, the primary judge erred in failing to consider whether the use of the CFCU Marks would therefore be likely to deceive or cause confusion, and ought to have found that use of the CFCU Marks would be likely to deceive or cause confusion.

198    The draft notice of appeal provides the following particulars:

(a)    The CFCU Marks contain the essential elements of the Bendigo Word Mark.

(b)    The kind of customers who obtain Bendigo's and [CFCU’s] services are the same (being a broad class of consumers).

(c)    The channels through which Bendigo and [CFCU] offer and provide their services are relevantly the same.

Relevant legal principles

199    At [411] of the Judgment, the primary judge identified the principle in McCormick & Co Inc v McCormick (2000) 51 IPR 102 (‘McCormick’) at [81] where Kenny J stated that reputation in s 60 of the TM Act is “apt to refer to the recognition of the […] marks by the public generally”. This principle was accepted by the Full Court (Jacobson, Yates and Katzmann JJ) in Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490 at [45].

200    In Rodney Jane Racing Pty Ltd v Monster Energy Company (2019) 370 ALR 140 at [83], O’Bryan J referred to the principle in McCormick and said that the reputation of a trade mark has “quantitative and qualitative dimensions”. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.

Consideration

201    Bendigo takes issue with the primary judge’s findings in respect of both the quantitative and qualitative dimensions of reputation.

Whether there was evidence of use of the Bendigo Community Marks as trade marks as at the CFCU Priority Date

202    It is common ground that the quantitative dimension requires use of the relevant trade mark as a trade mark.

203    There is significant overlap between Bendigo’s submissions here and those made in relation to use of the Bendigo Community Marks for the purpose of s 41 of the TM Act. We have already determined that the primary judge did not err in finding that the Bendigo Community Marks had not sufficiently been used as trade marks as at the Bendigo Priority Dates to distinguish within the meaning of s 41(6) of the TM Act. In respect of any use of the Bendigo Community Marks as trade marks prior to the CFCU Priority Date (being at least 11 years after the Bendigo Priority Dates), we make the following observations.

204    First, Bendigo submits that the primary judge disregarded evidence of use of the Bendigo Community Marks in press material. For the reasons we have already set above in relation to use as at the Bendigo Priority Dates, we do not accept this submission. The primary judge undertook a close analysis of the material in the Usage Book, including many media articles. In respect of the press material, the primary judge found at [446] of the Judgment that the evidence was mostly of descriptive use of “community bank” or use with a reference to Bendigo.

205    Secondly, while the primary judge did accept (at [275]) that there were instances where the term “community bank” was used on its own as at the Bendigo Priority Dates, for the reasons we have already set out above, when read in the context of [276] (where the primary judge found there was insufficient evidence to establish trade mark use notwithstanding such “purported” use), it is apparent that the primary judge did not consider these instances to be use of the Bendigo Community Marks as trade marks.

206    Thirdly (and similarly), while the primary judge accepted (Judgment, [441]) that there were some examples of use of the Bendigo Word Mark alone as at the CFCU Priority Date, she found that this was not sufficient to establish reputation in the marks. It is clear from the primary judge’s conclusions in [442]-[443] of the Judgment that, notwithstanding these examples of independent use, the material relied on by Bendigo was dominated by the B Bendigo Mark, the Bendigo Bank Mark and the Bendigo Composite Mark.

207    Bendigo also submits that the primary judge incorrectly applied a “dominant cognitive cue” test in considering use of the Bendigo Word Mark in combination with the B Bendigo Mark, the Bendigo Bank Mark, or other indicia of Bendigo. Bendigo acknowledges that this test was applied in Accor to determine whether a mark was inherently adapted to distinguish services but submits that the test is properly used to undertake side-by-side comparisons of trade marks to determine infringement, rather than determining whether there has been use as a trade mark.

208    We are of the view that the primary judge’s reference to the dominant cognitive cue was simply to express her overall impression that Bendigo’s material demonstrated use of the Bendigo Composite Mark, the B Bendigo Mark and the Bendigo Bank Mark (but not the Bendigo Word Mark) as trade marks. This was relevant to the issue of reputation and did not lead to any error.

209    Fourthly, Bendigo submits that the primary judge assumed, without evidence, that there was a substantial and significant reputation in the Bendigo Composite Mark, the B Bendigo Mark and the Bendigo Bank Mark. In this regard, we refer to our reasons above.

210    Finally, Bendigo submits that the primary judge failed to distinguish between references to Bendigo as a corporate entity and source of the Services, and “Bendigo Bank” as a trade mark. Bendigo contends that, in the case of the former, it was not open for the Court to find that use of the Bendigo Word Mark in combination with reference to Bendigo as a corporate entity precludes a finding that the Bendigo Word Mark has developed an independent reputation.

211    We do not accept that there was any failure to distinguish between references to Bendigo as a corporate entity and “Bendigo Bank” as a trade mark. On occasion, the primary judge notes whether the Bendigo Word Mark was used with or without “reference to Bendigo” (see Judgment at [246], [267], [275]-[276] and [446]). However, this is only done when assessing whether “community bank” has been used in a descriptive sense.

212    A review of the evidence reveals, as was found by the primary judge (Judgment, [440]-[442]), that a substantial amount of evidence relied on by Bendigo for the purpose of s 60 of the TM Act was of use of the words “community bank” as either an aspect of the Bendigo Composite Mark or in combination with the B Bendigo Mark or the Bendigo Bank Mark. The overall impression from the material as at the CFCU Priority Date was of these marks and not the Bendigo Word Mark.

Whether the primary judge failed to give sufficient weight to evidence of positive publicity for community bank branch openings

213    In respect of the qualitative dimension of assessing reputation, Bendigo contends that the primary judge gave insufficient or no weight to the evidence that the opening of a Bendigo community bank branch was the subject of much positive publicity, particularly in the 1990s and 2000s.

214    However, the primary judge specifically referred to media articles reporting on the opening of community bank branches (see Judgment at [211], [244] and [275]) and outlined (at [415]) the evidence given by Mr Hunt in relation to the events and publicity for community bank branch openings. In respect of the media articles, the primary judge found “those articles alone are not sufficient to establish reputation in the Bendigo Word Mark”: at [446].

215    Insofar as there is other evidence of positive publicity in relation to the community bank franchise model, it is to be understood in the context of Professor John Worthington’s evidence that the Bendigo Word Mark was underpinned by the building blocks of Bendigo’s reputation: see Judgment, [435]. In cross-examination, Professor Worthington agreed that it was the presence of the Bendigo branding elements that gave trust and other related attributes to the reputation of community banks: see Judgment, [436].

216    We do not consider that the primary judge erred in finding that Bendigo did not have a reputation in the Bendigo Word Mark sufficient to establish the ground of opposition under s 60 of the TM Act.

217    For these reasons, leave to appeal in respect of Grounds 1 to 4 of the draft notice of appeal should be refused.

APPLICATION FOR LEAVE GROUND 6: S 42 OF THE TM ACT

218    Ground 6 of the draft notice of appeal contends that the primary judge erred in finding that use of the CFCU Marks would not be contrary to law (being conduct that is misleading or deceptive contrary to ss 18 and 29 of the ACL) and ought to have found so for the reasons including that due to the:

(a)    reputation acquired by the Bendigo Word Mark in Australia as at the CFCU Priority Date;

(b)    nature of CFCU’s services, which are similar to Bendigo’s Services; and

(c)    deceptive similarity between the Bendigo Word Mark and the CFCU Marks,

the use of the CFCU Marks would be likely to mislead or deceive.

219    The draft notice of appeal refers to and repeats the particulars to Grounds 1 to 4 of the draft notice of appeal, and provides the following further particular:

The primary judge erred in not having regard, or sufficient regard, to the evidence filed by Bendigo of the reputation of the Bendigo Word Mark in considering whether the use of the CFCU Marks would be misleading or deceptive, contrary to ss 18 and 29 of the ACL.

220    Bendigo relies on the same evidence and submissions in support of Grounds 6 of the draft notice of appeal, which goes to s 42(b) of the TM Act, as it does in relation to s 60 of the TM Act.

221    For the reasons set out above in relation to Grounds 1 to 4 of the draft notice of appeal, leave to appeal in respect of Ground 6 should be refused.

APPLICATION FOR LEAVE GROUND 5: S 44 OF THE TM ACT

222    Ground 5 of the draft notice of appeal contends that the primary judge erred in finding that the CFCU Marks are not deceptively similar to the Bendigo Word Mark and ought to have so found, including for the following reasons:

(a)    the common use of “community” and “bank” in close juxtaposition;

(b)    the nature of CFCU's services, which are similar to Bendigo's Services and

(c)    the strong association of the word “community” with Bendigo's Services,

each of which causes the CFCU Marks to so nearly resemble the Bendigo Word Mark as to be likely to deceive or cause confusion.

223    The draft notice of appeal refers to and repeats the particulars to Ground 4 of the draft notice of appeal and includes the following further particulars:

(i)    The primary judge erred in finding that there was no evidence that people do not understand the term "mutual" and in finding that people would be likely to give attention to the word "mutual" when recalling the CFCU Marks (Judgment at [455]).

(ii)    The primary judge erred in not having regard, or sufficient regard, to the significance of the common use of the word "bank" in assessing deceptive similarity between the CFCU Marks and the Bendigo Word Mark and in finding that the word "bank" could not be said to be an essential feature nor make up the dominant cognitive cue in the marks as it denotes the nature of the organisation (Judgment at [457]), particularly in circumstances where:

(1)    the primary judge found (Judgment at [472]) that the addition of the word "bank" to CFCU's registered mark for COMMUNITY FIRST (trade mark registration no. 776512) "substantially affect[s] the identity of the marks"; and

(2)    the primary judge found (Judgment at [354]) that the word "bank" in the Bendigo Word Mark is of significance and makes it distinctive.

224    In her reasons, the primary judge found that the CFCU Marks were not deceptively similar to the Bendigo Word Mark, with the result that the ground of opposition advanced under s 44(2) of the TM Act must fail. Her Honour nevertheless went on to consider the exercise of discretion pursuant to s 44(3) against the prospect that she had erred in her consideration of deceptive similarity (at [460]-[474] of the Judgment), concluding that it nevertheless would be proper to accept the CFCU Marks pursuant to s 44(3)(b). No ground of appeal addressed that exercise. Bendigo submits that by exercising her discretion in this way, the primary judge had simply put forward a hypothetical expression of view that did not amount to a finding of fact or an exercise of discretion and that, in the event that the Full Court finds her Honour to have erred in her conclusion as to deceptive similarity, it should re-exercise the discretion afresh.

225    In our view it is unnecessary to consider this proposed ground of appeal in detail.

226    The scheme in s 44 of the TM Act is broadly directed to ensure that the Register is not cluttered by deceptively similar trade marks owned by different traders in respect of similar goods or services. In this context, s 44(1)-(2) provides for the assessment of a trade mark or application with an earlier priority date than the opposed application. However, the TM Act tolerates a degree of concurrent usage of deceptively similar marks in the circumstances set out in s 44(3)-(4). Section 44(3)(a) enables parallel registration where there has been honest concurrent use of the two trade marks. Section 44(3)(b) provides liberty for the Registrar to determine that, because of enigmatic “other circumstances” it is proper to accept the registration. Section 44(4) enables registration where the Registrar is satisfied that there has been continuous use of the trade mark the subject of the application since before the priority date of the blocking mark.

227    In the present case we have already upheld the primary judge’s conclusion in the Rectification Proceeding that the Register should be rectified by the removal of the Bendigo Word Mark. This is the only trade mark relied upon by Bendigo in support of the s 44 ground of opposition. As a matter of logic, it might be thought, and CFCU submits, that this is the end of the matter because the danger of clutter on the Register is resolved by the earlier mark being removed.

228    We agree. The discretion under s 44(3)(b) is exercised with regard to the circumstances as they exist at the time that the discretion is exercised rather than as at the priority date of the application: Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 369 ALR 367 at [83] (Reeves, Jagot and Rangiah JJ). In the present case, a compelling circumstance is that this Court has upheld the primary judge in her conclusion that the Register must be rectified by the removal of the trade mark cited for the purposes of s 44(2).

229    In these circumstances it is not necessary for us to consider the proposed ground further. Were Bendigo to have established on appeal that the primary judge erred in concluding that the Bendigo Word Mark is not deceptively similar to the CFCU marks, nevertheless the ground would fail because the Bendigo Word Mark can no longer remain on the Register. Accordingly, we would not grant leave to appeal on this ground.

CONCLUSION

230    We will order that the parties confer and within 14 days file an agreed minute of orders (including as to costs), or in default of agreement, written submissions (no longer than 5 pages) and proposed minutes of orders.

Associate:

Dated:    11 March 2021

REASONS FOR JUDGMENT

THAWLEY J:

231    I have had the advantage of reading the draft reasons of Middleton and Burley JJ. I agree that the appeal and application for leave to appeal should be dismissed.

232    Bendigo and Adelaide Bank Limited had three registered trade marks which used the words “community bank”. Two were registered in 1999 and one in 2001. In 2013, Community First Credit Union Limited (CFCU) sought to register two trade marks that each used the words “community” and “bank”. Bendigo successfully opposed registration. In response, CFCU appealed the Registrar’s decision refusing to register its trade marks and applied to rectify the register by removing Bendigo’s trade marks. CFCU was successful before the primary judge. The consequences were: first, that Bendigo’s trade marks were removed from the register; and, secondly, that CFCU’s trade marks could be registered. Bendigo’s appeal to this Court seeks to address the first consequence of the primary judge’s decision. Its application for leave to appeal seeks to address the second consequence.

233    An appeal to this Court is by way of rehearing. An appeal by way of rehearing is not an unfettered opportunity for an appeal court to substitute its evaluative judgments for those of the trial judge. If Bendigo establishes error on the part of the primary judge then this Court may intervene to correct the error assuming the law as applied to its evaluation of the evidence which was before the primary judge leads to a different result. If there is no error, there is no basis for intervention. The reasons of Middleton and Burley JJ address the various contended errors.

THE APPEAL

234    The appeal should be dismissed for two reasons. The primary judge has not been shown to have erred in her conclusions that:

(1)    first, the words “community bank” were not “inherently adapted to distinguish” Bendigo’s designated services from the services of other persons – see: s 41(3) of the TM Act;

(2)    secondly, Bendigo had not used the trade marks before the filing date of its applications to an extent sufficient to distinguish the designated services as being those of Bendigo – see: s 41(6)(a) of the TM Act.

235    As to the first matter, the primary judge concluded at J[233] that the ordinary signification of the term “community bank” was:

… a provider of banking services or financial institution that serves a particular community, whether defined by geography, workplace, trade or other feature. It is directly descriptive of the Services. Further, the evidence establishes that other traders, not actuated by improper motive, might, and indeed did as at the Priority Dates, legitimately desire to use those words for their ordinary signification.

236    Contrary to the appellant’s submissions, the term “community bank” is not so ambiguous as to have no meaning. Many phrases are capable of different meanings. This does not prevent them from having a usual meaning or being commonly understood by reasonable members of the public in a particular way. The primary judge’s identification of the ordinary signification of the term has not been shown to be attended by error.

237    Bendigo’s use of the term “community bank” was consistent with the ordinary signification of the words identified by the primary judge even though its banking model contained original or unique features to which the term could also refer. Bendigo’s uses of the term was not solely or predominantly directed to the unique features of its banking model; rather it was predominantly directed to the ordinary signification. Bendigo’s use of the words were directly descriptive and did not eclipse their ordinary signification or meaning: Cantarella at [57].

238    Other providers of financial services would be likely to make honest use of the words individually and in combination as a term for the signification which they ordinarily possess: Cantarella at [26]. Others might legitimately wish to use the words and the term “community bank” in connection with their services because, being directly descriptive, the words are inherently adapted to be used in reference to such services: Cantarella at [57].

239    The primary judge did not err in concluding that the words were not “inherently adapted to distinguish” Bendigo’s services from the services of other persons such that s 41(3) applied.

240    As to the second matter, this issue was principally a question of fact. Bendigo adduced evidence which it contended showed that it had used the trade marks before the filing date of its applications to an extent sufficient to distinguish the designated services as being those of Bendigo – see: s 41(6)(a) of the TM Act. Much of the material was undated. Some of it post-dated the filing date of the applications. Most of the material revealed that the words, even when used before the filing date, were used in conjunction with the Bendigo Composite Mark or other references to Bendigo which had the effect of diluting any trade mark significance which might otherwise have attached to the words “community bank”. The primary judge concluded at [276]:

It is unlikely, if not impossible, that a typical consumer exposed only to the Bendigo Word Mark before August 2001, in isolation of the indicia of Bendigo that typically accompanied the mark, would be caused to associate the Services with Bendigo.

241    The primary judge did not err in reaching her factual findings or in the conclusion which irresistibly followed from her findings, namely that s 41(6)(a) of the TM Act could not apply to deem the trade marks as capable of distinguishing the designated services from the services of others.

THE APPLICATION FOR LEAVE TO APPEAL

242    The application for leave to appeal should be dismissed for two reasons:

(1)    first, the primary judge has not been shown to have erred in concluding that Bendigo’s COMMUNITY BANK mark had not acquired a sufficient reputation as a trade mark in Australia before the priority date for registration of the CFCU trade marks to engage s 60(1)(a) of the TM Act;

(2)    secondly, the discretion under s 44(3)(b) would not be exercised to refuse registration of the CFCU marks given that the COMMUNITY BANK mark was to be removed from the register; the question under s 60(1)(b) – whether confusion would have been likely between the CFCU trade marks and the COMMUNITY BANK mark if it remained on the register – does not need to be answered.

243    As to the first matter, consistently with Bendigo’s case in relation to s 41(6), much of the material relied upon by Bendigo was material which showed use of the term “community bank” in conjunction with and dominated by references to Bendigo, namely the Bendigo Composite Mark, the B Bendigo Mark and the Bendigo Bank Mark. It was not erroneous to conclude that the use of the words “community bank” in that context did not establish reputation in the words “community bank” as a mark.

244    As to the second matter, given that the primary judge concluded that the register should be rectified by removal of the COMMUNITY BANK mark, the answer to the question raised by s 60(1)(b) – whether confusion would be caused between the COMMUNITY BANK mark (if it had remained on the register) and the CFCU marks – could not reasonably have affected a decision under s 44(3)(b) whether to accept CFCU’s applications for registration. Registration of the CFCU marks would not result in there being similar trade marks on the register liable to cause confusion.

CONCLUSION

245    I agree with the order proposed by Middleton and Burley JJ.

Associate:

Dated:    11 March 2021