EDI GLOBAL EDUCATION GROUP PTY LTD

EDI GLOBAL EDUCATION GROUP PTY LTD applied to register trade mark number 2467492, comprising the words "EDI Global Education Ethics-Discipline-Integrity" and a device, for services in Class 41, namely education and related information. The application was examined under section 33 of the *Trade Marks Act 1995* (Cth) and an adverse report was issued under section 44, citing a prior registered trade mark (registration 1691851) for "Educational services" in Class 41, owned by DW Educational Research, Inc. The examiner considered the applicant's trade mark to be deceptively similar to the prior mark due to the common "EDI" element and the similarity of the services. Following further adverse reports and a request for a hearing, the delegate of the Registrar of Trade Marks was required to determine whether the application should be rejected on the grounds of deceptive similarity.

The delegate was required to determine whether the applicant's trade mark was substantially identical with or deceptively similar to the prior registered trade mark, and whether the services offered under both marks were similar. The delegate also had to consider the presumption of registrability under section 33 and was not bound by the examiner's findings, needing to make an independent assessment of the facts and law. The delegate's task was to consider afresh the ground for rejection under section 44, which mandates rejection if an application is substantially identical with or deceptively similar to an earlier registered trade mark for similar services, unless specific exceptions under subsections 44(3) or 44(4) apply.

Applying the principles of trade mark law, the delegate first assessed substantial identity by comparing the marks side-by-side. The delegate agreed with the applicant that the marks were not substantially identical, noting clear visual differences including the stylised "EDI", the additional words "Ethics-Discipline-Integrity", and the globe device in the applicant's mark. The delegate then proceeded to consider deceptive similarity, which requires a different approach, focusing on the impression left on a person of ordinary intelligence and memory, allowing for imperfect recollection. The delegate noted that the services were clearly similar, both falling within Class 41 for educational services. The delegate then applied the principles from *Shell* and *Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd*, considering the marks as a whole, their look and sound, and the potential for confusion or deception in the minds of potential customers, requiring a real, tangible danger of deception or confusion, not merely a possibility.

The delegate concluded that while the services were similar and the "EDI" element was common, the applicant's trade mark, when considered as a whole and allowing for imperfect recollection, was not deceptively similar to the prior mark. The presence of the prominent device and the words "Ethics-Discipline-Integrity" created a sufficiently distinct impression that a real tangible danger of deception or confusion was unlikely. Therefore, the application was not rejected on the ground of deceptive similarity under section 44.