The Co-operative Bank fails to prevent use of 'co-op'

In The Co-operative Bank Limited v Anderson (CIV-2014-404-001757 [2014] NZHC 2686, October 30 2014), the Co-operative Bank Limited sought an interim injunction restraining the defendants, who are the trustees of the New Zealand Association of Credit Unions, from using or asserting a right to use certain names that include the word 'co-op'.

The Co-operative Bank has been using the name The Co-operative Bank in New Zealand since October 2011. It is the only bank operating as a co-operative in New Zealand. The Co-operative Bank has registered the words 'The Co-operative Bank' in logo form as a trademark. Its applications to register the words as a word mark were not accepted.

The New Zealand Association of Credit Unions is technically not a bank, but an entity which is co-operatively owned by 17 member credit unions and building societies. It is an industry body formed to represent those unions and societies, and provide advisory and support services for them. It offers some banking type services.

The New Zealand Association of Credit Unions wanted to change its branding to reflect its co-operative nature by including the words 'Co-op Money NZ', 'Co-op Services NZ' and 'Co-op Insurance NZ'.

The Co-operative Bank accepted that the New Zealand Association of Credit Unions could use the word 'co-op' in its marketing, but not as part of its new names.

The New Zealand Association of Credit Unions brought evidence showing that other businesses in the financial services area use or have used the word 'co-operative' before the Co-operative Bank. 

In rejecting the application for an interim injunction, the judge:

• placed weight on the fact that the Co-operative Bank had chosen to use the word 'co-operative' in its name against the background of competitors that were co-operatives promoting themselves using that word;

• noted that, although 'co-op' is an accepted abbreviation of 'co-operative', the Co-operative Bank did not use the word 'co-op', and the New Zealand Association of Credit Unions did not want to use the word 'co-operative', which diminished the similarities between the two;

• considered that the Co-operative Bank had chosen a descriptive name and that this name had not acquired a secondary meaning - courts are unsympathetic to parties who try to monopolise descriptive words and some degree of confusion has to be tolerated.

It now remains to be seen whether the Co-operative Bank will pursue this matter to trial.

Kate Duckworth, Catalyst Intellectual Property, Wellington