First Education Pty Ltd v First Education IP Pty Ltd

[2024] ATMO 173

TRADE MARKS ACT 1995

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

Re:Opposition by First Education Pty Ltd to registration of trade mark application 2076457 (classes 16 and 41) – F1RST EDUCATION (Figurative) – in the name of First Education IP Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Sonia Stewart of Counsel, instructed by Clayton Utz

Applicant: Siobhan Ryan KC of Counsel instructed by PriceWaterhouseCoopers Legal

Decision:

2024 ATMO 173

Trade Marks Act 1995 (Cth) - section 52 opposition: s 44 established – Registration refused

Background

1. This decision concerns an opposition brought by First Education Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of First Education IP Pty Ltd (‘Applicant’): 

Application Number:

2076457

Filing Date[1]:

18 March 2020

Goods and Services:

Class 16: Educational materials (other than apparatus) for use in teaching; Educational materials (printed) for the teaching of languages; Educational materials in printed form; Educational materials in written form; Modelling materials for educational purposes; Printed matter for educational purposes; Printed matter relating to health education; Printed publications for institutions of higher education; Stationery for children's educational activities; Stationery for use in the educational field; Teaching materials for education
Class 41: Academies (education); Academy education services; Advisory services relating to education; Education academy services; Education advisory services; Education services; Educational advisory services; Educational consultancy services; Educational institute services; Educational seminars; Educational services; Foreign language education services; Publication of educational materials; Publication of educational texts; Electronic publication of information on a wide range of topics, including online and over a global computer network; Preparation of texts for publication; Providing online electronic publications, not downloadable; Publication of books

(‘Applicant’s Goods and Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements:

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
The applicant has advised that the characters appearing in the trade mark may be transliterated as DI YI JIAO YU KE JI JI TUAN which may be translated into English as FIRST EDUCATION & TECHNOLOGY GROUP.

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 27 June 2022.  The SGP raised grounds of opposition under ss 42(b), 44, 58, 58A, 59, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 17 August 2022. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Haralambos Mavrolefteros, director and founder of the Opponent (‘Mavrolefteros 1’)	18 November 2022	HM-1
Evidence in answer
Nan Zhang, Director of the Applicant (‘Zhang declaration’)	22 February 2023	NZ-1
Evidence in reply
Haralambos Mavrolefteros, director and founder of the Opponent (‘Mavrolefteros 2’)	3 April 2023	none

1. On 24 April 2023 the Applicant requested an oral hearing.  Following the provision and expiry of a Cooling-Off period, the matter was set down for a hearing by video-conference on 13 August 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 4 June 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 30 July 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 6 August 2024 (‘Applicant’s Submissions’).  At the hearing Sonia Stewart of Counsel represented the Opponent instructed by Dean Gerakiteys and Antonia Wayne-Boyle of Clayton Utz., appearing by video-conference.  The Applicant was represented by Siobhan Ryan KC instructed by Ally Mangion of PriceWaterhouseCoopers Legal.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

3. The Opponent is an Australian company incorporated in 2010.  

4. The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Services’.  The Opponent provides evidence of ownership of additional trade marks however these trade marks, not being particularised in the SGP, have no relevance to the present proceeding.

Number	Trade Mark	Priority Date	Goods or Services
1984436	22 Jan 2019	Class 41: Arranging and conducting of lectures; Arranging and conducting of seminars; Arranging and conducting of workshops (training); Coaching (training); Dissemination of educational material; Education advisory services; Education information; Education services; Educational services; Information relating to education; Language teaching; Lingual education; Mentoring (education and training); Primary education services; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Publication of educational materials; Publication of educational texts; Training; Tutoring; Preschools (education)

1. The relevant claims/statements in Mavrolefteros 1 and 2 can be summarised as follows:

   ·     Since 2010 the Opponent has established a growing business offering one-on-one tuition in South Eastern and Inner West Sydney.  As of 2021 the Opponent operates centres in Maroubra, Earlwood, Bondi and Mascot and at the date of the declaration provides weekly tuition for 700 students in their communities and employs 110 tutors.

   ·     The Opponent has used the Opponent’s Trade Mark and the words FIRST EDUCATION (‘First Education Mark’) in various stylisations to promote its services.

   ·     The Opponent promotes its services using the Opponent’s Trade Mark and the First Education Mark through its website, newsletters, correspondence, business cards and stationery, e-mails and certain promotional materials, such as fridge magnets and clothing.  It also maintains a Facebook page, Instagram accounts for each centre and has distributed flyers, set up stalls at school fetes and placed advertisements in a number of local publications.  The opponent has participated in and won various local business awards.

   ·     The parties’ trade marks are similar because they share the memorable FIRST EDUCATION element.  Over the past two years, the Opponent has received enquiries from people who have wrongly believed that the Opponent operates centres in Victoria (the location of the Applicant).  The Opponent indicates that in most instances they do not maintain records of the miscommunication but attaches evidence of a text message communication from an individual attempting to contact the Applicant but instead contacting the Opponent about services.

2. The annexures to Mavrolefteros 1 and 2 contain evidence of revenue and advertising expenditure, which are in line with what one would expect for a business with 4 tutoring centres supporting 700 students.  They also provide evidence of various promotional materials showing use of the First Education Mark (both in plain word and stylised form) since 2010, including flyers and depictions of the Opponent’s social media accounts.  I also find that the evidence shows that the Opponent adopted the Opponent’s Trade Mark and started using it on promotional material (being its newsletters) in late 2014 and on its website in 2015.

   The Applicant

3. The Applicant is an Australian company incorporated in 2020.  

4. I have concerns with a number of aspects of the Zhang declaration which suggest that the declaration was not carefully drafted and hence the claims made, especially those not supported by properly dated documentary material (not a document with a date superimposed by the declarant on it),  should be treated with scepticism.  These concerns include:

   ·     The Zhang declaration claims use by the Applicant approximately 3 years before the Applicant came into existence.   It provides no evidence of the entity operating prior to the Applicant or that it was a predecessor of the Applicant in any way.

   ·     The Zhang declaration claims in its body that the Trade Mark was created in mid-2017 and yet annexes, at Tab 2, a document showing the Trade Mark stated to be a publication dated 2 February 2016  (but there is no evidence to support the statement, other than the assertion in the document).  The declaration then annexes numerous other examples that purport to show the Trade Mark being used prior to the date the Applicant declares it was created.

   ·     There is evidence in the Zhang declaration of use of the Trade Mark on Chinese social media but it is not clear if the use is in Australia and in connection with the Applicant’s Goods and Services.  The declarant does not address this.

   ·     The Zhang declaration asserts that portions of the declaration are confidential and have been marked so but the declaration does not mark any portions as confidential.  This suggests that the declaration has been prepared using a third-party template.

   ·     The Zhang declaration at one point refers to the Applicant as ‘our Client’, again suggesting that it was prepared and signed off by someone other than a person authorised to give evidence for the Applicant.

   ·     The Zhang declaration contains extensive submissions of a legal nature, which are not evidence (and hence are not necessary to summarise) and are not statements that one would expect a non-lawyer, such as Mr Zhang, to be able to make, which again suggests that the material was prepared in a careless way by a third party. 

5. Nevertheless, the relevant claims/statements in the Zhang declaration can be summarised as follows:

   ·     The Applicant engaged a third party to create the Trade Mark in mid-2017 which was first used by the Applicant in late 2017.  The Applicant has continuously used the Trade Mark since that date and as at the date of the declaration offers services to 1,000 students (apparently in the Melbourne region).

6. The annexures to the Zhang declaration contain evidence of use of the Trade Mark including advertising on various websites, social media and on the Applicant’s own website.  In particular they include evidence of a website at captured by the Wayback Machine on January 8, 2018, showing the Trade Mark.  The Applicant provides no evidence of revenue or advertising expenditure.

   Grounds of Opposition, Onus and Standard of Proof

7. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A, 59, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds of opposition.[2] Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   [2] I note that in the Applicant’s Submissions the Applicant raised concerns that the submissions of the Opponent under the ss 58 and 59 grounds of opposition did not reflect the grounds as particularised by the Opponent in the SGP.  I consider that these submissions have some force but given that the Opponent has established the ground of opposition under s 44 of the Act, this issue is moot.

8. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[5]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

9. The relevant provisions of the Act are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) 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 goods or closely related services; or

   (ii)             a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (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.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, 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.

10. To successfully oppose the application pursuant to s 44 the Opponent must establish that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[6] by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar goods/services, and/or goods/services which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

    [6] or an international registration designating Australia protected or sought to be protected.

11. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and/or 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. 

12. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  In addition, the Opponent’s Trade Mark is registered for educational services in class 41 which are similar to the class 41 educational services of the Trade Mark and closely related to the class 16 educational material of the Trade Mark.  

    Substantially identical and/or deceptively similar

13. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

    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.[7]

    [7] [1963] HCA 66, [12].

14. The Trade Mark and the Opponent’s Trade Marks are set out below:

15. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark. Indeed the only common element is the shared use of the word ‘education’ in similar font.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

1. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J 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 [trade mark].[8]

   [8] Ibid [13].

   25.The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’)[9] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[10] as follows:

   [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [10] [2023] FCA 482, [55] (Jackman J).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

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

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

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

   (c)the marks should not be compared side by side;[13]

   (d)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;[14]

   (e)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’;[15]

   (f)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;[16]

   (g)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 opposed mark;[17]

   (h)“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; [18]

   (i)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;[19]

   (j)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”;[20]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

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

   [14] Ibid.

   [15] Ibid.

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

   [17] Shell (n 7), 415.

   [18] 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).

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

   [20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross (n 5), 594-595 (Kitto J).

   [21] Australian Woollen Mills Ltd (n 13).

   [22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 13), 657.

2. Furthermore the Court in Self Care noted the following:[23]

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[24]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[25], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[26]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[27]

   [23] Self Care (n 8) [33].

   [24] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [25] Act, s 68.

   [26] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [27] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

3. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[28]

   [28] See Swancom (n 11), [93] and, albeit in the s120(1) context Self Care (n 8), [49].

4. Justice French (as he then was) expressed the view in Registrar of Trade Marks v Woolworths Ltd[29] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[30]

   [29] Woolworths (n 20), [39].

   [30] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

5. I consider the market for the Applicant’s Goods and Services to be broad and not a particularly sophisticated customer base.  In the present case, both marks consist of words that would be identified as ‘FIRST EDUCATION’ (the Trade Mark replacing the ‘I’ with a ‘1’) and the number 1.  The Opponent’s Trade Mark also contains a wreath device and the Trade Mark contains some additional Chinese-language characters that translate into ‘First Education & Technology Group’ (and its ‘1’ may give the impression that it is on a book, though this is not significant).  There are also some differences in stylization.  The Applicant’s Submissions also note the different device elements and the different placement of the word elements in the respective marks.

6. While noting the term ‘education’ is descriptive in the context of the Applicant’s Goods and Services (and the element ‘first’ is somewhat laudatory), I am satisfied on balance that the marks are deceptively similar.  The marks share 3 key elements, namely the words ‘first’ and ‘education’ and the number ‘1’.  These shared elements create marks that are aurally and conceptually similar (with the Chinese-language characters either being discounted by the majority of the population that are unable to read Chinese or to the extent that they can, merely reinforce the ‘first education’ element).  Visually the most prominent elements of each mark are FIRST EDUCATION and the number 1, with the stylisation of the Trade Mark and the wreath device in the Opponent’s Trade Mark being of lesser importance in the overall impression taken by the average consumers from each of the trade marks.  For these reasons, consumers would be likely, at least, to be caused to wonder whether the trade source of the Opponent’s Services and the trade source of the Applicant’s Goods and Services are one and the same.  Indeed, while noting that it has kept limited records, the Opponent gives evidence that confusion has actually occurred.[31]    

   [31] The parties dispute whether the evidence in the EIR, in which a parent enquires about whether the Opponent has a centre in Box Hill, is evidence of confusion.  On balance I prefer the submissions of the Opponent, who noted that it would be somewhat implausible for a coincidental enquiry to be made in respect of the one geographical location the Applicant trades out of.

7. I find that the Trade Mark is deceptively similar to the Opponent’s Trade Mark and the requirements under s 44(1) and (2) are satisfied. It is then necessary to consider the application of s 44 (3) and (4) of the Act.

   Subsection 44(4): prior continuous use

8. Subsection 44(4) gives the Applicant the option of overcoming a finding under s 44(1) and (2) through the provision of evidence showing that it continuously used the Trade Mark for a period beginning before the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

9. The priority date for the registration of the Opponent’s Trade Mark is 22 January 2019.  This is before the Applicant was established.  I note my concerns with the quality of the Applicant’s evidence in paragraph 12 above.  The Trade Mark was clearly not used by the Applicant on or before 22 January 2019 since the Applicant did not exist.  Section 44(4) does allow use by the Applicant’s predecessor in title, but the burden falls on the Applicant, the party relying on this provision, to provide evidence showing the identity of the individual/entity that used the Trade Mark and that it was a predecessor in title to the Applicant.  The Applicant fails to do so, impossibly asserting that the (non-existent) Applicant used the Trade Mark in 2018 and 2019.  While there is some evidence before me of use of the Trade Mark on a website in 2018 (and in other marketing materials that may predate 22 January 2019), I not satisfied by the evidence before me that such use has been by the Applicant (which is an impossibility) or a predecessor in title of the Applicant (as there is no evidence of which entity used the mark and their connection to the Applicant).  Given the numerous incorrect and/or internally inconsistent statements made in the Zhang declaration, I am unpersuaded that this evidence shows continuous use by the Applicant or a predecessor in title of the Trade Mark prior to the incorporation of the Applicant.  Accordingly, I am unsatisfied that the Applicant’s evidence satisfies the requirements of s 44(4) of the Act. 

10. I note that if I am incorrect in this finding, I would have found that there is evidence that the Opponent made first use of the Opponent’s Trade Mark for educational services in 2014 (noting that the Applicant, in paragraph 14 of its submissions, states that the Trade Mark was first used in 2017) and hence the opposition would have been successful under the ground of s 58A instead.  I note that the Applicant does not submit that it used the Trade Mark before the Opponent used the Opponent’s Trade Mark; rather it simply asserts that the marks are not deceptively similar.

    Subsection 44(3): Honest Concurrent Use or Other Circumstances

11. The Applicant does not submit that the Trade Mark should proceed to registration on the basis of s 44(3) and for completeness I reach the same conclusion.  In the absence of evidence of the entity using the Trade Mark prior to the relevant date, and the fact that any such use would have been in respect of a limited period of approximately two years before the relevant date I am not satisfied that the provisions in respect of honest concurrent use should be applied, nor are there any other circumstances that would provide a basis to allow the Trade Mark to proceed to registration.    

12. I find that the Opponent has established the ground of opposition under s 44.

    Decision and Costs

13. I have found the Opponent has established the ground of opposition it raised pursuant to s 44.  As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

14. The Opponent has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    17 September 2024