5 min read

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:

dated 8 February 1999 and Registration No. 887023 for the plain script mark “COMMUNITY BANK” dated 24 August 2001 (collectively “the Bendigo Community marks”).

Bendigo also owned Registration No. 746687

dated 21 October 1997 (“Bendigo Composite mark”).

All of Bendigo’s registrations covered various banking and financial services in Class 36.

On 1 March 2013 Community First Credit Union Limited (“Community First”) applied to register two marks which included “community” and “bank” under Application No.1541620 COMMUNITY FIRST BANK and 1541594 COMMUNITY FIRST MUTUAL BANK (the “CFCU Marks”) covering Class 36 services, including financial services and personal banking services.

Bendigo successfully opposed both of Community First’s applications under s 44 of the Trade Marks Act 1995 (Cth) on the basis of Bendigo’s earlier registration for COMMUNITY BANK. 

Community First then appealed the opposition decision and sought rectification of Bendigo’s registrations for the Bendigo Community marks under s 88(2)(a) on the basis that they could have been opposed under s 41 because they were not sufficiently distinctive at the priority dates.

Primary decision

In summary, the primary judge held that:

  1. the Bendigo Community marks were not to any extent inherently adapted to distinguish the services for the purpose of s 41(3) and that the extent of use was not sufficient to show that the marks were distinctive in fact as at the priority dates for the purpose of s 41(6) and the registrations should therefore be rectified on the basis of s 41; and
  2. Bendigo’s opposition to Community First’s applications should be set aside as none of the opposition grounds under ss 42(b), 44, 58A, 59 and 60 were met and the CFCU marks should proceed to registration.

Appeal decision

Bendigo appealed the primary judge’s decision to rectify the Bendigo Community marks under the s 41 ground and sought leave to appeal the opposition decision, but was unsuccessful.   The main points from the Full Court’s decision are discussed below.

  1. Section 41(3) – Inherently adapted to distinguish

Bendigo argued that the primary judge erred in finding the Bendigo Community marks not to any extent inherently adapted to distinguish. 

On the issue of inherent distinctiveness, the primary judge had found 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” and directly descriptive of the services. [1] 

Bendigo argued that “community bank” had a number of possible meanings in the context of the services and, as such, would have no one ordinary meaning or signification.  The appeal judges said that there is no basis for limiting section 41 to prevent only appropriation of words and phrases with one singular meaning.  Justices Middleton and Burley noted “the existence of more than one possible meaning does not mean that a term is not capable of ordinary signification”. [2]

Bendigo also argued that the ordinary meaning of “community bank” was not the one found by the primary judge, but a reference to its unique franchise model, where local businesses operated local branches of the “Bendigo bank” under franchise.  However, the appeal judges agreed with the primary judge that “Community Bank” was used for its ordinary signification “that is, to convey the meaning of providing banking services to a particular community”. [3]  Justices Middleton and Burley held that “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”)”. [4]

  1. Section 41(6) – factual distinctiveness

Bendigo also argued that the primary judge erred in finding that use of the Bendigo Community marks was not sufficient to establish distinctiveness under s 41(6). 

The question to be addressed was summarised by Justices Burley and Middleton as “whether, objectively, the term “community bank” was used to distinguish the services”.  Their Honours also noted that the uses must be as a trade mark.  [5]

In most cases, the words “community bank” were used in the signage and promotional materials in close association with the B logo and the words “Bendigo Bank” in the format:

or with the B logo or other Bendigo bank indicia.  The primary judge had considered that these uses emphasised “Bendigo Bank” and the B logo as the brand and diluted any brand significance in the words “Community Bank”. 

While the primary judge had recognised that there can be double trade mark use, she had found it “unlikely, if not impossible” that an ordinary consumer viewing the “Community Bank” mark in isolation of the B logo, the “Bendigo Bank” mark or other Bendigo indicia would associate the services with Bendigo. [6] 

The appeal judges agreed and found that the primary judge had made no error.  Justices Middleton and Burley found that the words “community bank” were not used as a brand.  Rather, it was the Bendigo branding that was used to distinguish the services and indicate the connection with Bendigo. [7]

There had been some use of “Community Bank” alone, or at a distance from Bendigo’s other marks and indicia.  However, the appeal judges agreed with the primary judge that this use was very limited and did not show use of “Community Bank” in a trade mark sense sufficient to establish distinctiveness or use in relation to the relevant services.

  1. Opposition

In relation to the opposition proceedings, Bendigo sought leave to appeal the primary judge’s decision in relation to ss 60, 42(b) and 44. 

The appeal judges upheld the primary judge’s decision on the basis that Bendigo did not have sufficient reputation in “Community Bank” to succeed in opposition under ss 60 and 42(b) and that opposition under s 44 could not succeed because Bendigo’s registrations for the Bendigo Community marks were to be cancelled.

Takeaways

Even when descriptive marks are registered, there may be difficulties maintaining and enforcing exclusive rights.  

Owners of descriptive, or somewhat descriptive, trade marks should ensure that they are used in a manner which clearly indicates that they are a trade mark rather than a description, and separate from other more distinctive marks.

Trade mark owners are advised that registrations for marks which have no descriptive significance are more readily protectable, and generally grant the strongest enforceable rights.


[1] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, pgh 21.

[2] ibid, pgh 107.

[3] ibid, pgh 87.

[4] ibid, pgh 98.

[5] ibid, pgh 151.

[6] ibid, pgh 155.

[7] ibid, pgh 159.

Authored by Michelle Howe and Sean McManis

6 min read

A dispute between two Victorian live music venues concerning use of trade marks including “CORNER” and “CORNER HOTEL” has seen infringement allegations dismissed by the Federal Court of Australia.  The court found that the respondents various JAZZ CORNER marks were not deceptively similar to any of the Applicant’s CORNER trade mark registrations.

While O’Bryan J accepted that the word “JAZZ” has a descriptive meaning when used in relation to live music performances, his Honour held that adding this term to the word CORNER (or words CORNER HOTEL) left an impression that was distinct from the impression created by each of the Applicant’s CORNER marks.  This decision emphasises the importance of any impression left by uncommon (or unusual) elements of a trade mark, particularly where the shared elements are considered to be descriptive.

Background

Since at least 1995, Swancom Pty Ltd (“Swancom”) have been operating a hotel venue offering live music and hospitality services in Richmond, Victoria.  Swancom also own Australian trade mark registrations for CORNER HOTEL, CORNER, THE CORNER and CORNER PRESENTS for various entertainment and hospitality services in classes 41 and 42.

Swancom commenced trade mark infringement proceedings against five respondents, namely Jazz Corner Hotel Pty Ltd (“JCH”), Bird’s Basement Pty Ltd (“BB”), Saint Thomas Pty Ltd “(ST”), Ubertas Operations Pty Ltd (“UO”) and Mr Albert Dadon.  Mr Dadon is the sole director of JCH, BB and ST, each of which operate businesses from a building in William Street, Melbourne, namely a hotel business called The Jazz Corner Hotel, a jazz music venue called Bird’s Basement and a café business called The Jazz Corner Café.

UO own Australian trade mark registrations (used by JCH with UO’s authority) for the word mark JAZZ CORNER and the composite mark shown below for various hotel, night club, food and beverage services in class 43.

ST obtained trade mark registrations for the word mark JAZZ CORNER and the composite mark shown below for various food and beverage related services in class 43.

Swancom alleged that the respondent’s use of JAZZ CORNER OF MELBOURNE, JAZZ CORNER OF THE WORLD, JAZZ CORNER HOTEL and JAZZ CORNER CAFÉ (the “JAZZ CORNER marks”) in relation to live music services and related ticket booking services infringed its CORNER registrations.  Further, as sole director of JCH, BB and ST, Swancom alleged that Mr Dadon was a joint tortfeasor in the alleged infringements and sought cancellation of the various Jazz Corner registrations outlined above.

The respondents denied the alleged infringement and sought partial cancellation of Swancom’s registrations. Partial cancellation was sought because the infringement claims were not relevant to all services covered by the registrations.

Validity of CORNER marks

The respondents’ argued that Swancom’s CORNER registrations lacked sufficient distinctiveness when used in relation to the registered services.  O’Bryan J took judicial notice of the fact that Australian hotels are often located on street corners and usually provide entertainment services to patrons.  Further, the evidence disclosed the word “corner” was used descriptively to refer to the geographical location of hotels and in business names for hotels since the 19th century.

On this basis, his Honour concluded that the phrase “CORNER HOTEL” was not distinctive in relation to ordinary hotel services (such as alcoholic drinks served on the premises, prepared meals and, to a lesser extent, accommodation).  However, O’Bryan J held that the words CORNER HOTEL were capable of functioning as a trade mark for services which relate to staging of professional live music performances, particularly given the extent to which Swancom and its predecessors has used that phrase as a trade mark.

As a result, Swancom’s CORNER HOTEL registration was valid as it only covered services which related to staging professional live music performances.  For similar reasons, his Honour held that Swancom’s CORNER and THE CORNER marks were also capable of distinguishing services related to the staging of professional live music performances.  Swancom’s CORNER PRESENTS mark was also considered to be capable of distinguishing the relevant Class 41 services.

However, as Swancom’s CORNER and THE CORNER registrations cover a broader range of services in Class 41, O’Bryan J invited both parties to make submissions about whether these registrations ought to be amended/limited to preserve the freedom of other hotels, cafes, bars and restaurants to use the word “corner” in their trading name.

Infringement of Swancom’s trademark registrations

The question of whether the respondents’ use of the JAZZ CORNER marks infringed Swancom’s CORNER registrations effectively turned on two factors, namely:

  1. Did the respondents’ use the JAZZ CORNER marks as a trade mark in relation to services relating to staging of live music performances; and
  2. Are the respondent’s JAZZ CORNER mark deceptively similar to Swancom’s CORNER registrations?

Use as a trade mark

Based on the evidence, his Honour held that JCH, BB and ST operate separate businesses, namely, The Jazz Corner Hotel, Bird’s Basement and The Jazz Corner Café (respectively).  O’Bryan J held that only BB provided services for which the Swancom marks are registered, namely, professional live music performances.

However, his Honour noted that BB’s jazz club was located in the same building as the JCH and ST businesses which shared common ownership and offered accommodation and café services under the JAZZ CORNER marks.  Further, each of these businesses were found to engage in substantial cross-promotion of each other’s business.

Based on the manner and context of its use, his Honour concluded that ordinary members of the public would perceive The Jazz Corner Hotel as a provider of live music performances in the basement jazz club known as Bird’s Basement.  As such, O’Bryan J held that JCH had used JAZZ CORNER HOTEL as a trade mark in relation to live music services.

While O’Bryan J acknowledged that JAZZ CORNER OF MELBOURNE could potentially be used in a descriptive or laudatory manner, his Honour held that JCH and BB had used JAZZ CORNER OF MELBOURNE as a trade mark in relation to all of the businesses conducted from the William Street premises, namely, the hotel, café and jazz club.

While O’Bryan J held that BB cross-promoted the Jazz Corner Hotel, the evidence showed that BB did not use the JAZZ CORNER HOTEL marks as a badge of origin in relation to live music services.  In the same manner, while ST was found to have cross-promoted live music performances at Bird’s Basement jazz club, the evidence showed that ST did not use JAZZ CORNER CAFÉ as a badge of origin in relation to live music services.

The JAZZ CORNER OF THE WORLD marks were used in a more limited manner and predominantly in connection with Bird’s Basement jazz club.  On this basis, his Honour concluded that the respondents had used the phrase “Jazz Corner of the World” in a descriptive manner rather than as a trade mark.

Are the Jazz Corner marks deceptively similar to Swancom’s CORNER marks?

In view of the above, O’Bryan J was only required to consider whether the JAZZ CORNER HOTEL and JAZZ CORNER OF MELBOURNE marks were deceptively similar to any of Swancom’s CORNER registrations. 

His Honour considered the addition of “jazz” to the word “corner” (or the words “corner hotel”) gives the composite phrase a distinct sound and meaning.  In his Honour’s view, attention is immediately drawn to the word “jazz” and the words “corner” or “corner hotel” assume a secondary role in the phrase.  Further, his Honour expressed the view that the addition of “jazz” is likely to create an impression or idea in the mind of an ordinary member of the public that is distinct from the impression or idea created by Swancom’s CORNER marks.

On this basis, O’Bryan concluded that the JAZZ CORNER HOTEL and JAZZ CORNER OF MELBOURNE marks were not deceptively similar to any of Swancom’s CORNER registrations.  As a result, Swancom’s infringement claims against the respondents’ were dismissed.

Potential Defences to Infringement

While not strictly necessary, O’Bryan J went on to consider the respondents’ potential defences to infringement.  In summary, his Honour held that the respondents’ could not rely on the following defences to infringement:

  • Section 122(1)(b) – that the respondents had used the JAZZ CORNER marks in good faith to indicate some characteristic or quality of the services;
  • Section 122(1)(fa) – that due to the extent of use of the terms “JAZZ CORNER OF MELBOURNE” and “JAZZ CORNER OF THE WORLD”,  the respondents’ would be entitled to obtain registration of those marks in Australia;
  • Section 122(1)(e) – that the respondents’ use of the registered JAZZ CORNER marks was merely the exercise of rights granted to them under the Trade Marks Act. This was because the respondents had only registered their mark for Class 43 services, not the Class 41 services covered by the infringement claim;

His Honour also concluded that Mr Dadon could not be a joint tortfeasor because all relevant decisions and actions were done in his capacity as a director.  The evidence did not establish that Mr Dadon had such involvement in or responsibility for the manner and extent of that cross-promotion that he ought to be regarded as a joint tortfeasor.

Swancom have now filed an appeal in relation to this matter.

Authored by Nathan Sinclair and Sean McManis

10 min read

Office of the Retirement Commissioner v Cash Converters Pty Ltd [2020] NZIPOTM 27 (23 December 2020)

This recent decision provides helpful guidance on the principles for partial revocation of trade mark registrations in New Zealand and the determination of a “fair description” for goods and services.

The decision also highlights important differences between the law and practice on non-use removal proceedings in Australia and New Zealand.

Background

Cash Converters Pty Ltd (“Cash Converters”) sought partial revocation of the Office of the Retirement Commissioner’s (ORC) Registration No. 637400 SORTED. It covered Class 36 services in providing advisory, consultancy and information services relating to finance, investment and financial planning for and during retirement, and providing financial information relating to retirement.

They also sought partial revocation of Registration No. 976028 SORTED, which covered broadly worded Class 36 services “financial affairs; monetary affairs; real estate affairs” and various services in providing advice, consultancy and information the areas of finance, monetary affairs, retirement, real estate, property and insurance and Class 41 educational services and services in providing educational material and information relating to insurance, financial affairs, monetary affairs, real estate affairs.  The full specifications for the registrations are at [1].  

Revocation was sought on the basis of non-use of the SORTED mark for a continuous period of three years.

Facts/evidence

ORC started using its SORTED mark in 2001, when it established its website www.sorted.com for providing information and tools, such as online calculators, to help New Zealanders prepare for, and manage, their finances during retirement. 

From at least 2013 ORC’s use of SORTED expanded to a broader range of services in providing information, advice and resources to promote “the life-long financial literacy of New Zealanders”.  With this expansion in 2013, ORC obtained the later Registration No. 976028 SORTED for the broader range of services. 

ORC’s evidence of use included use of the SORTED mark on guides, booklets, seminar and course details, on online tools and calculators and on an online forum.  [2]

Discussion

As the SORTED mark had not been used on all of the services covered by the registrations, partial revocation was in order.   

The Assistant Commissioner noted the High Court decision in Sky Network Television Ltd v Sky Fiber Inc (Sky Network) confirming how partial revocation applications should be considered:

The case law establishes that the first task is to find as a fact what goods or services there has been genuine use of the trade mark in relation to; and then to ‘arrive at a fair specification of goods having regard to the use made’.”  [3]

ORC was found to have used the SORTED mark to provide generalised information, advice and education on retirement planning and financial literacy generally.  ORC was also found to have used the mark to provide online calculator tools and an online community forum which provided users with more specific information and recommendations. 

In considering what was a “fair description” of those services provided under the mark, the Assistant Commissioner identified the principles set out by Mallon J in Sky Network:

“(a) The assessment has “nothing to do with the defendant.” Defining the goods negatively by reference to the defendants’ activities is therefore not the approach. 

(b) The proprietor has protection outside his or her specification of goods in areas where he or she can demonstrate a likelihood of deception under other provisions. “There is no pressing need, therefore, to confer on the proprietor a wider protection than his [or her] use warrants by unduly broadening the specification of goods.

(c) The width of the surviving specification “must depend largely upon questions of fact and degree.”  “Wide words can cover what are commercially quite different sorts of articles”.  If there is shown to be use of just one of those things “it would be commercially nonsense to maintain the registration for all goods caused by the wide words”. [4]

In summary, and further quoting Mallon J in Sky Network, the Assistant Commissioner noted that:

The “fair description” is one “which would be given in the context of trade mark protection” and depends on the nature of the goods, the circumstances of the trade and the breadth of use proved” and should be approached as ““objective and impartial, balancing the competing interests” and “a view from the trade”.[5]

The Assistant Commissioner recognised the important “balancing exercise” of competing interests of the owner, competitors and the public:

  1. to have the Register uncluttered with unused marks or with registrations with overly broad specifications;
  2. to prevent parties being unjustifiably exposed to infringement of registrations with overly broad specifications; and
  3. “the owner’s interest in protecting its brand” which “aligns with the public interest in consumers not being deceived or confused by use of another trade mark” and the owner’s entitlement “to commercially realistic protection, remembering the test for infringement, extends to similar goods and services”.  [6]

Findings 

The scope of the original specifications was considered to “extend well beyond the actual use that had been made of the SORTED mark”.  [7]

The Assistant Commissioner considered that a “fair description” of the services offered under the SORTED mark could be reached by considering the “functions (the way the mark has been used) and the generalised, rather than personalised, nature of the education, information and advice ORC provides”.  [8] 

ORC was not using the SORTED mark in relation to all types of information, education and advisory services in the areas of insurance, finance, money, real estate and investment.  Those services were all provided in giving advice and information focusing on retirement and personal financial literacy, and not on all aspects of insurance, finance, money and other matters.

The Assistant Commissioner found that it was appropriate to limit the specifications to reflect the focus of the use and reworded the services more narrowly and as all “relating [or related] to retirement and personal finance”.

Further, ORC’s advice was not personalised advice given to individuals.  Rather, it was generalised advice and information.  The general description “advisory services relating to…” in the original Class 36 specifications for both registrations was considered too broad.  The Assistant Commissioner considered that it would be fair to describe those services as “general advice relating to…”.

The original term “consultancy services relating to…” used in the Class 36 specifications for both registrations was removed because ORC would not be reasonably understood to be a consultancy business.  The Assistant Commissioner noted that “there is no aspect of the ORC business that technically requires the description to be used. ORC is able to have commercially realistic protection without the reference to consultancy”.  [9]

The full specifications as amended are at footnote  [10].

Earlier cases considering partial revocation

The Assistant Commissioner provided a helpful summary of earlier partial revocation cases and what was found to be a “fair description” for the goods and services.  This can be found at paragraph 71. 

These decisions show that precise descriptions are applied in partial revocation actions and that broad and unqualified descriptions are unlikely to be allowed under New Zealand practice. 

Comparison with Australian law

The decision highlights some important differences between the law on revocation/non-use removal actions in Australia and New Zealand. 

1. Discretion to remove or restrict a registration

The Assistant Commissioner noted in the decision that there is no “overriding discretion to refuse to revoke or partially revoke a registration”, which follows from the decision Crocodile International Pte Ltd v Lacoste [2017] NZSC 14 at [97].  [11]  Under New Zealand law, a trade mark owner must show use during the three year non-use period, or special circumstances that justify non-use of their mark, to successfully oppose a revocation application.

Unlike New Zealand, under Australian law the Registrar has the discretion under s 101(3) of the Trade Marks Act 1995 not to remove a registration even where there has not been use of the mark if “satisfied that it is reasonable” not to remove the registration.  Further, s 101(4) provides that in deciding under subsection (3) not to remove a registration the Registrar may take into account use of the mark on similar goods or closely related services or similar services or closely related goods. 

2. Standing to apply for removal for non use

New Zealand law requires that only an “aggrieved person” can apply for revocation of a registration.   As noted in the decision “the term “aggrieved person” is given a wide and liberal interpretation.  This will generally include trade rivals.  As well as someone who is disadvantaged in a legal or practical way.”  [12]

However, under Australian law any person can apply for removal of a registration for non-use and there is no requirement for the removal applicant to show aggrievement to have standing to apply for removal. 

3. Date of revocation

In the New Zealand decision, the Assistant Commissioner noted that “the result of revocation is that the owner’s rights cease to exist on the date the application revocation was filed, or at an earlier date if the Commissioner is satisfied the non-use ground has been made out at an earlier date.”  [13]

Under Australian law, the date of removal of a registration for non-use is the date of the Registrar’s decision and the Registrar does not have the discretion to determine an earlier date for removal.

Takeaway

There are important differences in relation to standing and discretion in revocation/non-use removal proceedings in New Zealand and Australia which trade mark owners should note.

When defending a non-use removal action in Australia, and there has been no use of the mark during the 3 year non-use period, trade mark owners should still consider whether there are grounds for convincing the Registrar to refuse removal of the registration, such as some residual reputation in the mark from earlier use or possibly overseas reputation.

In New Zealand, it is much more likely than it is in Australia that broad descriptions will be restricted to more specific and limited descriptions.


[1] Services covered by Registration No. 637400 SORTED:

Class 36:Providing advisory, consultancy and information services relating to finance, investment and financial planning for and during retirement; providing financial information relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the world-wide web, an intranet or the Internet

Services covered by Registration No. 976028 SORTED:

Class 36: Financial affairs; monetary affairs; real estate affairs; providing advisory, consultancy and information services relating to finance, investment and financial planning for and during retirement; advisory services relating to real estate ownership; providing financial information relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the world-wide web, an intranet or the Internet; consultancy services relating to insurance; information services relating to insurance; insurance advisory services; insurance information; provision of insurance information; consultation services relating to real estate; providing information, including online, about insurance, financial and monetary affairs and real estate affairs; provision of information in relation to real estate; provision of information relating to property (real estate); provision of information relating to real estate; real estate advisory; services; real estate investment advice

Class 41: Dissemination of educational material; education services; educational services; life coaching (training or education services); provision of educational information; provision of education services via an online forum; publication of educational materials; publication of educational texts; the aforementioned relating to insurance, financial affairs, monetary affairs, real estate affairs

[2] Arguing that ORC did not provide financial advisory services, Cash Converters’ evidence in support of the revocation application referred to ORC’s disclaimers on its website that its information and tools “should be treated as a guide only” and should be used before seeking professional advice.  It was also noted that ORC’s “Investor Kickstarter” guide is referred to on the website as a guide only which  “does not constitute investment advice to any person”.  The evidence also noted that ORC is not a registered financial services provider under the Financial Services Provider (Regulation and Dispute Resolution) Act 2008 (RDR Act). 

In reply, ORC filed evidence that it is not required to be registered under the RDR Act as it is not a business which provides financial services as defined under the Act.  ORC also noted that their “Investor Kickstarter” tool asks high level questions to categorise participants into one of five types of investors and that their disclaimer clarifies that the advice given through this tool is not the type of financial advice to which the Financial Advisors Act 2008 would apply. 

[3] Office of the Retirement Commissioner v Cash Converters Pty Ltd [2020] NZIPOTM 27 (23 December 2020), paragraph 39.

[4] ibid, paragraph 44.

[5] ibid, paragraph 45.

[6] ibid, paragraph 52.

[7] ibid, paragraph 110.

[8] ibid, paragraph 113.

[9] ibid, paragraph 96.

[10] Registration No. 637400

Class 36: Providing information services and general advice relating to finance, investment and financial planning for and during retirement; providing financial information and general advice relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the worldwide web, an intranet or the Internet

Registration 976028

Class 36: Providing information and general advice, including online, about insurance, financial and monetary affairs and real estate affairs related to retirement and personal finance; provision of financial calculation services relating to retirement and personal financial planning including budgeting, personal debt, home buying, mortgages, superannuation, investment and savings, including by way of online; calculators; providing information services and general advice relating to finance, investment and financial planning for and during retirement; providing financial information and general advice relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the world-wide web, an intranet or the Internet.

Class 41: Education services related to retirement and personal financial matters including financial planning and budgeting, debt, home buying, mortgages, superannuation, investment and savings; provision and dissemination of educational material and information related to retirement and personal financial matters, including by way online communication, websites, web blogs, social media, forums, publications (including texts, guides and brochures), news articles, training, courses, seminars and meetings.

[11] ibid, paragraph 12 quoting  Crocodile International Pte Ltd v Lacoste [2017] NZSC 14 at [97]

[12] ibid, paragraph 28.

[13] ibid, paragraph 11.

Authored by Michelle Howe and Sean McManis