EDI GLOBAL EDUCATION GROUP PTY LTD

[2025] ATMO 29

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2467492 (class 41) - EDI Global Education Ethics-Discipline-Integrity & device - in the name of EDI GLOBAL EDUCATION GROUP PTY LTD

Delegate:

Anne Makrigiorgos

Representation:

Applicant:  Hazan Hollander

Decision:

2025 ATMO 29

Trade Marks Act 1995 (Cth) –section 33 proceeding = s 44 ground for rejection considered –use of trade mark is likely to give rise to deception or confusion – trade mark application rejected

Background

1.     On 19 July 2024, EDI GLOBAL EDUCATION GROUP PTY LTD (‘Applicant’) applied to register trade mark number 2467492 (‘Application’) pursuant to the provisions of the Trade Marks Act 1995 (Cth).[1] Details of the Application appear below:

Trade Mark:      (‘Trade Mark’)

Specification: Class 41: education; information on education; education and instruction; instruction and education; education information (‘Services’).

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations1995 (Cth).

2.     The Application was examined as required under s 33. On 2 September 2024, IP Australia issued an adverse examination report identifying a ground of rejection under s 44 based on registration 1691851 filed on 6 May 2015 (‘Prior Mark’). Details of this Prior Mark appear below:

Mark:                  EDI

Owner:              DW Educational Research, Inc

Specification:               Class 41: Educational services

3.     The examiner stated:

Your trade mark closely resembles the earlier trade mark because the letters EDI are the essential feature of your trade mark and the only feature of the conflicting trade mark. The presence of additional matter in your trade mark is not sufficient to differentiate between your trade mark and the conflicting trade mark. Consumers are likely to believe that your trade mark and the conflicting trade mark denote the same/similar services from the same trade source. AND the services are the same/similar because the conflicting mark has claimed class 41 services which are same/similar to the class 41 services claimed in your application.

4.     In response to the objection, the Applicant filed submissions that the Trade Mark was not substantially identical with or deceptively similar to the Prior Mark as follows (in summary):

·The letters EDI are not an essential feature of the Trade Mark as the letters EDI are barely discernible in the Trade Mark. Rather, the essential features are the prominent bold words  and the prominent  device (‘Device’).

·the letters EDI are written in such a unique manner that consumers would barely understand them as being the letters and would not be the part of the Trade Mark that consumers would recall. Rather consumers would recall the Device and the words .

·even if the letters EDI were the essential feature of the Trade Mark, that would be insufficient to find deceptive similarity.

·the Trade Mark contains numerous distinctive visual features that are not present in the Prior Mark including the words Ethics-Discipline-Integrity. These words create a different connotation for the Trade Mark to that of the Prior Mark.

·the respective marks must be compared as a whole and it is impermissible for the examiner to simply pick one similar feature of the marks to reject the Application.

·given the differences between the respective marks, there is no real tangible danger of confusion occurring even when the imperfect recollection test is applied.

5.     The Applicant also provided a table of trade marks which were not considered deceptively similar to a prior mark even though, according to the Applicant, the respective trade marks contained an essential feature, the Applicant claiming these cases are analogous to the matter at hand.

6.     A further adverse report was issued by the examiner on 30 October 2024 maintaining the ground for rejection under s 44.

7.     In response to the rejection, the Applicant requested a hearing by way of video conference. Peter Whitehead of Hazan Hollander appeared at the hearing on behalf of the Applicant on 30 January 2025 and filed written submissions prior to the hearing.

8.     As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the ground for rejection under s 44 identified by the examiner and I am not bound by the examiner’s findings. Nor is this hearing a review of the examiner’s objections. Whilst I may consider reasoning provided by the examiner in support of the objection, ultimately, I must make a decision based on my interpretation of the facts and law.

Discussion

9.     Section 44 relevantly provides:

Identical etc. trade marks

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

10.    Subject to s 44(3) and (4), I must reject the Application if I am satisfied that:

·the Prior Mark has a filing date which is earlier than that of the Application and is held in a name other than that of the Applicant (‘the first requirement’);

·the Services are similar to the services of the Prior Mark (‘the second requirement’); and

·the Trade Mark is substantially identical with or deceptively similar to the Prior Mark (‘the third requirement’).

11.    The details of the Prior Mark are set out above at [2] of this decision. From those details it is evident that the Prior Mark is held in a name other than that of the Applicant and has an earlier filing date than the Application.

12.    The next consideration is whether the Services are similar to those of the Prior Mark. They clearly are, all being educational services, and the Applicant does not contend otherwise.

13.    The final consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Prior Mark.

Substantial identity

14.    The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[2] where his Honour stated at 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

[2] (1963) 109 CLR 407 (‘Shell’).

15.    The test for substantial identity involves a side by side comparison. As such I have reproduced the Prior Mark and the Trade Mark below:

EDI  

16.    The Applicant submits that the Trade Mark is not substantially identical and I agree. On a side-by-side comparison there are clear differences between the respective marks, the most obvious being that the letters EDI are stylised, the additional words and the globe device (‘Device’) in the Trade Mark. These differences are unlikely to go unnoticed on a side by side comparison.

17.    I move then to consider whether the Trade Mark and Prior Mark are deceptively similar.

Deceptive similarity

18.    Section 10 provides a definition of deceptively similar being that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.

19.    Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[3]

[3] Shell (n 2), 416.

20.    The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[4] conveniently stated the relevant principles, which were summarised in The Agency Group Limited v H.A.S. Real Estate Pty Ltd[5], which include:

[4] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[5] [2023] FCA 482, [55] (Jackman J).

·the resemblance between the two marks must be the cause of the likely deception or confusion;[6]

·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[7]

·the marks should not be compared side by side;[8]

·the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[9]

·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[10]

·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[11]

·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the applied for mark;[12]

·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[13]

·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[14] and

·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”.[15]

[6] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

[7] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

[8] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[9] Ibid.

[10] Ibid.

[11] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[12] Shell (n 2), 415.

[13] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[14] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[15] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594 - 595 (Kitto J).

21.    In the case of a composite mark, all the elements of the mark must be considered in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other.[16]

[16] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] – [111]; Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; [78]; and Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [100].

22.    In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Prior Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Prior Mark will be used and the circumstances in which the services are and will be provided.

23.    The Applicant submits that there is no likelihood of deception or confusion for reasons that include:

·the Trade Mark as a whole is novel and distinctive;

·the only common element between the Trade Mark and the Prior Mark are three letters, although those letters are not readily discernible in the Trade Mark;

·the Trade Mark contains numerous additional elements which renders the Trade Mark entirely dissimilar from EDI;

·the visual appearance of the Trade Mark is distinct and striking. There is no possibility of the Trade Mark being visually confused with the Prior Mark;

·Consumers recollection of the Trade Mark would be vastly different to their recollection of the Prior Mark; and

·the marks must be considered in their entirety. That is, all of the elements of the Trade Mark and the Prior Mark must be considered as a whole. When doing so, it is apparent, that the marks are not deceptively similar.

24.    The Applicant directs me to six recent decisions within this jurisdiction where trade marks have been held not to be deceptively similar. In respect of these decisions, I consider that there are significant factors which distinguish those cases from that before me including that in all these decisions, the prior mark was neither a single distinctive word nor a combination of three distinctive letters.

25.    I also note the following comments of Windeyer J in Re Bali Brassiere Co Inc’s Registered Trade Mark and Berlei Ltd’s Application:

Cases were cited to me from passages in judgments dealing with marks held to be, or held not to be, by reason of similarities, deceptive or confusing. I have read these cases, and others. I do not think I need discuss them. The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand.

26.    The Prior Mark consists entirely of the letters EDI. I consider these letters are distinctive and the Applicant has not provided any evidence or submissions that this is not the case. The Trade Mark shares the same letter element EDI, albeit in a stylised form at the beginning of the Trade Mark. While the Applicant submits that the letter element EDI in the Trade Mark could be seen as letters other than EDI, I do not agree and the Applicant provides no alternative letter combination. The other word elements of the Trade Mark which follow or are beneath the letters EDI are descriptive to varying degrees of the character of the Services and in my opinion would not diminish the prominence and the main identifying element and trade source indicator of the letters EDI. I consider that Global Education is descriptive of education services provided globally and the Device reinforces this suggestion. Further the words Ethics – Diversity – Inclusion, which appear as minor elements in the Trade Mark, are principles used to describe the Services as being provided fairly to all people. In addition, the Device does not diminish the prominence of the EDI element as in the context of education services, when a trade mark contains both a device and words, I consider customers will more readily refer to words in a mark rather than attempt to remember or describe the detail of a device element.

27.    I consider that the letters EDI have retained their identity in the Trade Mark as an essential or distinguishing feature and an indicator of trade source. The elements additional to the EDI element do not significantly distinguish the Trade Mark to prevent consumers from being caused to wonder whether the trade source of the educational services of the Prior Mark and that of the Services is one and the same.

28.    As I consider the distinctive and memorable element of the Trade Mark is the letters EDI, if consumers were to refer to the Trade Mark, they are unlikely to ignore these letters and refer to the Trade Mark as Global Education or Global Education Ethics – Diversity – Inclusion. While I believe that educational services are chosen with considerable care, usually through a website or an academic adviser, a common question asked of a student is where the student is studying, or of an educator, where they teach. If one were to ask a notional consumer of the Services provided under the Trade Mark what educational institution they were attending or teaching in, it is more probable than not that they would refer to the letters EDI e.g. I am attending EDI, I am doing my business management course at EDI, or I am teaching at EDI. In such circumstances, it is highly likely that a consumer upon hearing the Trade Mark being used in respect of educational services, who was aware of the Prior Mark, would be caused to wonder whether these services were those provided by the owner of the Prior Mark.

29.    Considering the importance of the letters EDI in the Trade Mark, and the similarities when compared to the Prior Mark, I consider there is a real, tangible danger that the Trade Mark would be confused with the Prior Mark. While the other elements of the Trade Mark do create points of distinction, I do not consider these sufficient to mitigate the significant risk of confusion. It is likely the Trade Mark will be thought to be associated with the Prior Mark. The Trade Mark is therefore deceptively similar.

30.    Nevertheless, it remains possible for the Application to be accepted under the provisions of ss 44(3) and/or 44(4) of the Act. However, as the Applicant has not filed any evidence in this regard nor submissions, the provisions of ss 44(3) and/or 44(4) do not apply.

Decision

31.    Section 33 of the Act provides:

Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

32.    As I am satisfied on the balance of probabilities that there is a ground for rejecting the Application under s 44, I reject the Application for possible registration.

33.    If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s direction or order.

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

10 February 2025