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ARTICLE · 11 JUNE 2021

Descriptive trade marks – Registration is no guarantee of exclusive rights

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This decision emphasises the difficulties in enforcing and monopolising descriptive marks, even after registration.

AustraliaIntellectual Property
Michelle Howe
Michelle Howe
Sean McManis
Sean McManis
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Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31

The Full Federal Court has upheld the primary judge's decision that Bendigo and Adelaide Bank Limited could no longer hold its monopoly of more than 20 years over the words "community bank".

The decision emphasises the difficulties in enforcing and monopolising descriptive marks, even after they are registered. It also provides useful discussion on "ordinary signification" in the assessment of whether marks are inherently adapted to distinguish and use as a trade mark for the purpose of showing factual distinctiveness.

Background

Bendigo and Adelaide Bank Limited ("Bendigo") owned Registration No. 784796 for the mark:

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