Be 'clever' with branding

Posted on June 23, 2021

Bendigo and Adelaide Bank has long been a popular ‘second tier’ financial institution within the community – a ‘community bank’.

The bank has held a trade mark monopoly over the expression COMMUNITY BANK, owning both COMMUNITY BANK plus logo (since 1999) and plain word mark COMMUNITY BANK (since 2001).

Now the Full Federal Court has upheld a decision that under trade mark principles the words are descriptive rather than distinctive, and so the marks could not survive a legal challenge, and were ordered to be removed from the Register.

The problem with the marks was that the ordinary consumer seeing COMMUNITY BANK would not associate it with the bank, unless there were other trade mark material such as BENDIGO BANK or a ‘B’ logo.

The legal challenge to the marks (brought by Community First Credit Union Limited) succeeded on the basis that the bank did not have sufficient reputation in COMMUNITY BANK on its own. It had made no (or only very little) use of the expression alone or separate from the bank’s other trade marks and indicia.

Lessons for brand owners

  1. Don’t adopt a brand or mark which is essentially descriptive, ie. which other traders would want ‘without improper motive’ to use to describe their own goods or services.
  2. If your business succeeds in achieving registration of an essentially descriptive trade mark, make sure that you use it as a trade mark, ie. to establish distinctiveness, rather than as a description.
  3. Even if a mark is registered, there is always the possibility that it will be subject to a later legal challenge, as this case demonstrates.
  4. If you’re a company that sells ice cream, don’t use a ‘brand’ like FROZEN or CHILLY; prefer a brand which has some inherent degree of distinctiveness, or at least is capable of distinguishing your goods or services from those of competitors.

We help many clients to be ‘smart’ with their brands. Please contact us if you would like us to assist.

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