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The credit union took Bendigo Bank to court over its trademark of the phrase “community bank”, which it has held for two decades, successfully winning the suit on 20 September.
Since the late 1990s, Bendigo Bank has held several trademarks around the terms “community bank” and “community banking” in light of its community banking program, which provides funding to community-owned banks in rural areas.
In 2003, Bendigo was granted an Australian Trademark Registration for Community Bank®.
The registration term was for a 10-year period effective from 24 August 2001 and would have been due for renewal in 2011.
Given the trademarks, Bendigo held a monopoly on the use of the term “community bank” in any entity name or marketing material by any other banking or financial service.
The trademark was to affect Community First Credit Union in their future application to APRA to become a bank or mutual bank, as it would restrict the use of the words “community” and “bank” in succession in their entity name.
Community First is not the first institution to go up against Bendigo for the use of the term “community bank”. G&C Mutual Bank was facing legal pursuit from the bank for its first trademark application, under the name Australian Community Bank.
In 2014, G&C Mutual filed three applications to register the new name and brand “Australian Community Bank” with IP Australia.
G&C Mutual received a letter from Bendigo demanding that it withdraw the application for, and cease use of, the name.
After receipt of Bendigo’s letter, G&C Mutual decided to select a different name to avoid further delays and costly legal disputes that would prejudice its corporate strategy.
The trademark issue came to a conclusion on Friday (20 September), when Federal Court Justice Brigitte Markovic ruled in favour of Community First Credit Union, to deregister the trademark on “community bank”.
She ruled: “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.
“There is no covert or skilful allusion to the services provided by Bendigo. The combined words [“community banking”] are directly descriptive of the services offered, namely, the provision of financial services to a community of people defined by geography.”
While acknowledging that the community banking model developed by Bendigo in 1997 was “original and previously unused in Australia”, Justice Markovic stated the “uniqueness of the franchising model... is not the point”.
Justice Markovic ordered that the “parties attempt to agree” on the appropriate form of orders, including that Bendigo Bank deregister their trademark that includes the words “community bank”.
The court decision also grants Community First Credit Union the ability to register the words “community bank” in their name, when the credit union becomes a bank or mutual bank.
Melina Morrison, CEO of the Business Council of Co-operatives and Mutuals, said she was “delighted” with the result.
“We are delighted that the Federal Court has recognised Community First Credit Union for the community focus they have and that they can finally describe their business model for what it is – real community banking.
“Mutuals are the original community lending model; they are owned by their members and have always put the community before profit,” Ms Morrison said.
She concluded: “We are pleased the courts have removed this unfair restriction by a publicly listed bank against a community-owned bank. The ability of Community First Credit Union to properly describe their business model has rightly been prioritised over the marketing strategy of a listed bank.”
[Related: Banks to face court over ‘unfair’ credit contracts]
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